IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

AUTOSCRIBE CORPORATION 

 v. 

REPAY HOLDINGS CORPORATION, et al. 

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§ 

§ 

§ 

§ 

Case No. 2:23-cv-0349-JRG 

(Lead Case) 

JURY TRIAL DEMANDED 

AUTOSCRIBE CORPORATION 

 v. 

FORTIS PAYMENT SYSTEMS, LLC 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

Case No. 2:23-cv-0364-JRG 

(Member Case) 

AGREED DISCOVERY ORDER 

Having considered the Unopposed Motion for Leave to File Joint Motion for Entry 

of Agreed Discovery Order Past Deadline (Dkt. No. 30), the Court finds that it should be 

and hereby is GRANTED. After a review of the pleaded claims and defenses in this action, 

in furtherance of the management of the Court’s docket under Federal Rule of Civil Procedure 

16, and after receiving the input of the parties to this action, it is ORDERED AS FOLLOWS: 

1. Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil Procedure

26(a)(1), each party shall disclose to every other party the following information:

(a) the correct names of the parties to the lawsuit;

(b) the name, address, and telephone number of any potential parties;

(c) the legal theories and, in general, the factual bases of the disclosing party’s claims

or defenses (the disclosing party need not marshal all evidence that may be offered

at trial);

(d) the name, address, and telephone number of persons having knowledge of relevant

facts, a brief statement of each identified person’s connection with the case, and a

brief, fair summary of the substance of the information known by any such person;

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(e) any indemnity and insuring agreements under which any person or entity carrying 

on an insurance business may be liable to satisfy part or all of a judgment entered 

in this action or to indemnify or reimburse for payments made to satisfy the 

judgment; 

(f) any settlement agreements relevant to the subject matter of this action; and 

(g) any statement of any party to the litigation. 

2. Disclosure of Expert Testimony.1

 A party must disclose to the other parties the identity 

of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 

703 or 705, and: 

(a) if the witness is one retained or specially employed to provide expert testimony in 

the case or one whose duties as the party’s employee regularly involve giving expert 

testimony, provide the disclosures required by Federal Rule of Civil Procedure 

26(a)(2)(B) and Local Rule CV-26; and 

(b) for all other such witnesses, provide the disclosure required by Federal Rule of Civil 

Procedure 26(a)(2)(C). 

3. Additional Disclosures. Without awaiting a discovery request,2 each party will make the 

following disclosures to every other party: 

(a) provide the disclosures required by the Patent Rules for the Eastern District of 

Texas with the following modifications to P.R. 3-1 and P.R. 3-3: 

1

 All expert reports should be written such that the report is organized with discrete 

paragraph numbers. 

2

 The Court anticipates that this disclosure requirement will obviate the need for requests 

for production. 

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i. If a party claiming patent infringement asserts that a claim element is a 

software limitation, the party need not comply with P.R. 3-1 for those claim 

elements until 30 days after source code for each Accused Instrumentality 

is produced by the opposing party. Thereafter, the party claiming patent 

infringement shall identify, on an element-by-element basis for each 

asserted claim, what source code of each Accused Instrumentality allegedly 

satisfies the software limitations of the asserted claim elements. 

ii. If a party claiming patent infringement exercises the provisions of 

Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of 

patent infringement may serve, not later than 30 days after receipt of a 

Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that 

amend only those claim elements identified as software limitations by the 

party claiming patent infringement. 

(b) produce or permit the inspection of all documents, electronically stored 

information, and tangible things in the possession, custody, or control of the party 

that are relevant to the pleaded claims or defenses involved in this action, except to 

the extent these disclosures are affected by the time limits set forth in the Patent 

Rules for the Eastern District of Texas; and 

(c) provide a complete computation of any category of damages claimed by any party 

to the action, and produce or permit the inspection of documents or other 

evidentiary material on which such computation is based, including materials 

bearing on the nature and extent of injuries suffered, except that the disclosure of 

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the computation of damages may be deferred until the time for Expert Disclosures 

if a party will rely on a damages expert. 

4. Protective Orders. The Court will enter the parties’ Agreed Protective Order. 

5. Discovery Limitations. The discovery in this cause is limited to the disclosures described 

in Paragraphs 1-3 together with: 

(a) Definitions: 

i. “Plaintiff” refers to plaintiff Autoscribe Corporation. 

ii. The “349 Case” refers to Case No. 2:23-cv-0349-JRG. 

iii. The “364 Case” refers to Case No. 2:23-cv-0364-JRG 

iv. “Defendant Group” refers to a group of parties that have been identifies as 

defendants in a common operative complaint (i.e.., Defendants Repay 

Holdings Corporation, Repay Holdings, LLC, and any subsequently added 

defendant in the 349 Case are a “Defendant Group” (“the Repay Defendant 

Group”) and Defendant Fortis Payment Systems and any subsequently 

added defendant in the 364 Case is a “Defendant Group” (“the Fortis 

Defendant Group”). 

v. “Side” refers to each (1) Plaintiff and (2) Defendant Groups (collectively). 

(b) The parties agree to work in good faith to modify the limitations set forth in 

Paragraph 5 of this Discovery Order as needed and if necessary. 

(c) Interrogatories: Plaintiff may serve a maximum of 20 common interrogatories on 

Defendants, collectively, and 10 individual interrogatories on each Defendant 

Group. Defendants collectively may serve a maximum of 20 common 

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interrogatories on Plaintiff. Each Defendant Group may serve a maximum of 10 

individual interrogatories on Plaintiff. 

(d) Requests for Admission: Plaintiff may serve a maximum of 40 requests for 

admission per Defendant Group and each Defendant Group may serve a maximum 

of 40 requests for admission on Plaintiff (excluding requests for admission for the 

purpose of authenticating a document or establishing its admissibility, which are 

unlimited); 

(e) Party Depositions: Plaintiff may take up to 35 total hours of deposition testimony 

(inclusive of both 30(b)(1) and 30(b)(6) depositions but excluding experts) of each 

Defendant Group. The Defendant Groups may collectively take up to 35 total hours 

of deposition testimony of Plaintiff (inclusive of both 30(b)(1) and 30(b)(6) 

depositions but excluding experts), and will co-ordinate with each other to divide 

the allocation. Each Defendant Group may take up to 15 additional hours of 

deposition testimony per Defendant Group. Defendant Groups will make 

reasonable efforts to co-ordinate on common issues. Depositions of experts and 

third parties do not count against these limits. Each party reserves the right to seek 

adjustment of these time limits based upon changes to the scope of discovery. No 

inventor on any patent-in-suit shall be deposed more than once in his or her 

individual capacity. 

(f) Third Party Depositions: Each side may take up to 40 hours of third-party 

deposition testimony. Moreover, the parties can take unlimited depositions on 

written questions of custodians of business records for third parties. 

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(g) Experts: Each Party (i.e., Plaintiff and Defendant Group) is entitled to 7 hours of 

deposition time to cross-examine an expert that offers an expert report against the 

Party. For the purpose of this provision, if Plaintiff’s expert serves a common 

report concerning invalidity on multiple Defendant Groups, the number of 

deposition hours to be split by the Defendant Groups shall be 10 hours. Likewise, 

if an expert provides a report with opinions common to multiple Defendant Groups 

concerning invalidity, Plaintiff shall be entitled to depose that expert for 10 hours. 

If an expert serves a report on multiple issues (e.g., infringement and validity) then 

the expert’s deposition shall be limited to 10 hours. 

(h) The limitations set forth in the Federal Rules of Civil Procedure with respect to the 

length of depositions will apply, except as modified by this Order. If any party 

requests more than the total allowed time for a particular deposition, or if any party 

or side seeks more than its agreed-upon limit of deposition hours as set forth herein, 

the parties agree to meet and confer in good faith to attempt to resolve the issue 

without intervention by the Court. 

(i) Modification: Any party may later move to modify these limitations for good 

cause. 

(j) Service of Deposition Notices: The Parties agree that employees of the Parties may 

be served with deposition notices through the Party’s counsel, rather than being 

served by a subpoena. 

(k) Required Consultation Regarding Scheduling: For the convenience of 

witnesses, counsel and parties, the parties shall confer about the scheduling and 

locations of the depositions of witnesses after the service of deposition notices and 

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subpoenas. Absent agreement to the contrary, a party witness will be deposed near 

his or her office or home, or where the party’s attorneys have an office at the 

witness’s discretion. 

6. Privileged Information. There is no duty to disclose privileged documents or 

information. However, the parties are directed to meet and confer concerning privileged 

documents or information after the Status Conference. By the deadline set in the Docket 

Control Order, the parties shall exchange privilege logs identifying the documents or 

information and the basis for any disputed claim of privilege in a manner that, without 

revealing information itself privileged or protected, will enable the other parties to assess 

the applicability of the privilege or protection. Any party may move the Court for an order 

compelling the production of any documents or information identified on any other party’s 

privilege log. If such a motion is made, the party asserting privilege shall respond to the 

motion within the time period provided by Local Rule CV-7. The party asserting privilege 

shall then file with the Court within 30 days of the filing of the motion to compel any proof 

in the form of declarations or affidavits to support their assertions of privilege, along with 

the documents over which privilege is asserted for in camera inspection. However, if the 

party asserting privilege seeks an in camera review by the Court, such party shall first 

obtain leave from the Court prior to delivery of documents to the Court. 

7. Signature. The disclosures required by this Order shall be made in writing and signed by 

the party or counsel and shall constitute a certification that, to the best of the signer’s 

knowledge, information and belief, such disclosure is complete and correct as of the time 

it is made. If feasible, counsel shall meet to exchange disclosures required by this Order; 

otherwise, such disclosures shall be served as provided by Federal Rule of Civil Procedure 

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5. The parties shall promptly file a notice with the Court that the disclosures required under 

this Order have taken place. 

8. Duty to Supplement. After disclosure is made pursuant to this Order, each party is under 

a duty to supplement or correct its disclosures immediately if the party obtains information 

on the basis of which it knows that the information disclosed was either incomplete or 

incorrect when made, or is no longer complete or true. 

9. Discovery Disputes. 

(a) Except in cases involving claims of privilege, any party entitled to receive 

disclosures (“Requesting Party”) may, after the deadline for making disclosures, 

serve upon a party required to make disclosures (“Responding Party”) a written 

statement, in letter form or otherwise, of any reason why the Requesting Party 

believes that the Responding Party’s disclosures are insufficient. The written 

statement shall list, by category, the items the Requesting Party contends should be 

produced. The parties shall promptly meet and confer. If the parties are unable to 

resolve their dispute, then the Responding Party shall, within 14 days after service 

of the written statement upon it, serve upon the Requesting Party a written 

statement, in letter form or otherwise, which identifies (1) the requested items that 

will be disclosed, if any, and (2) the reasons why any requested items will not be 

disclosed. The Requesting Party may thereafter file a motion to compel. 

(b) An opposed discovery related motion, or any response thereto, shall not exceed 7 

pages. Attachments to a discovery related motion, or a response thereto, shall not 

exceed 5 pages. No further briefing is allowed absent a request or order from the 

Court. 

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(c) Prior to filing any discovery related motion, the parties must fully comply with the 

substantive and procedural conference requirements of Local Rule CV-7(h) and (i). 

Within 72 hours of the Court setting any discovery motion for a hearing, each 

party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet and 

confer in person or by telephone, without the involvement or participation of other 

attorneys, in an effort to resolve the dispute without Court intervention. 

(d) Counsel shall promptly notify the Court of the results of that meeting by filing a 

joint report of no more than two pages. Unless excused by the Court, each party’s 

lead attorney shall attend any discovery motion hearing set by the Court (though 

the lead attorney is not required to argue the motion). 

(e) Any change to a party’s lead attorney designation must be accomplished by motion 

and order. 

(f) Counsel are directed to contact the chambers of the undersigned for any “hot-line” 

disputes before contacting the Discovery Hotline provided by Local Rule CV26(e). If the undersigned is not available, the parties shall proceed in accordance 

with Local Rule CV-26(e). 

10. No Excuses. A party is not excused from the requirements of this Discovery Order because 

it has not fully completed its investigation of the case, or because it challenges the 

sufficiency of another party’s disclosures, or because another party has not made its 

disclosures. Absent court order to the contrary, a party is not excused from disclosure 

because there are pending motions to dismiss, to remand or to change venue. 

11. Filings. Only upon request from chambers shall counsel submit to the court courtesy 

copies of any filings. 

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12. Proposed Stipulations by the Parties Regarding Discovery. 

(a) E-Discovery Order: The parties will negotiate in good faith on the terms of an 

appropriate Order Regarding E-Discovery (“ESI Order”). Depending upon the 

availability of both sides, the Parties hope to submit the ESI Order by January 12, 

2024, or as soon as reasonably practicable thereafter. 

(b) The parties agree that they will serve each other with copies of any subpoena or 

deposition notice directed to a third-party. A party receiving documents from a third 

party will provide copies of those documents to each other party within 5 business 

days of receiving those documents. The parties agree to consult with each other 

before scheduling any third-party deposition and to provide at least 5 business days’ 

notice of the selected court reporting agency to allow for the coordination of remote 

depositions, including the logistics of soft copy exhibits. The party requesting a 

deposition may request to do so remotely. In the event a deposition occurs remotely, 

including by agreement of the parties, such a remote deposition shall be treated for 

all purposes as a deposition conducted under Federal Rule of Civil Procedure 30. 

(c) The parties agree that privilege logs will not be exchanged unless and until a request 

for such logs is submitted to the opposing party in writing. If such request is 

submitted, the parties are not required to include on their privilege logs any 

protected documents or communications that came into existence on or after July 

27, 2023. If a party asserts a privilege or protection over any material with 

Litigation Counsel dated before July 27, 2023 for the Repay Action or August 10, 

2023 for the Fortis Action, the party will only need to provide a privilege log 

identifying the earliest 10 documents or information containing such privileged or 

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protection information. Without revealing the privileged information, any privilege 

logs exchanged will identify the privileged document or information and include a 

basis for the privilege assertion that will enable the other party to assess the 

applicability of the privilege or protection. “Litigation Counsel” is defined as 

counsel of record in this litigation or counsel consulted for this litigation. The 

parties may modify the foregoing provisions of this paragraph either by agreement 

or by order of the Court for good cause shown after compliance with the applicable 

procedures for resolution of discovery disputes. 

(d) In accordance with Patent Rule 4-3(b), the parties will each serve a disclosure of 

expert testimony simultaneous with filing of the Joint Claim Construction 

Statement consistent with Fed. R. Civ. P. 26(a)(2)(B)(i)–(ii) or 26(a)(2)(C) for any 

expert on which it intends to rely to support its proposed claim construction or 

indefiniteness position or to oppose any other party’s proposed claim construction 

or indefiniteness position. 

(e) The parties agree to accept service of letters, discovery requests, and other 

documents (except in the case of document required to be filed with the Court 

electronically, the service of which is governed by the Local Rules, or documents 

that are too voluminous for email) via email listserve addresses designated by each 

of the parties or via email to at least each attorney listed on the docket as attorney 

of record for the opposing party. The parties further agree that service via this 

method is deemed to have occurred on the date sent. 

(f) Pursuant to Federal Rule of Evidence 502(d), inadvertent production of materials 

covered by the attorney-client privilege or work-product protection is not a waiver 

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in this or any other federal or state proceeding. In case of inadvertent production, 

at the producing party’s request, the receiving party shall return or destroy the 

inadvertently produced materials within three (3) business days. The producing 

party will provide a privilege log in accordance with Paragraph 6. The specific 

mechanism for disputing a claim of privilege shall be set forth in the Order 

Regarding E-Discovery proposed by the parties. 

13. Standing Orders. The parties and counsel are charged with notice of and are required to 

fully comply with each of the Standing Orders of this Court. Such are posted on the Court’s 

website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan. The substance 

of some such orders may be included expressly within this Discovery Order, while others 

(including the Court’s Standing Order Regarding Protection of Proprietary and/or 

Confidential Information to Be Presented to the Court During Motion and Trial Practice) 

are incorporated herein by reference. All such standing orders shall be binding on the 

parties and counsel, regardless of whether they are expressly included herein or made a 

part hereof by reference. 

.

____________________________________

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE So ORDERED and SIGNED this 20th day of December, 2023.

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