IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

ROSEN TECHNOLOGIES LLC,

Plaintiff,

v. 

ECOBEE TECHNOLOGIES ULC,

Defendant. 

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Case No. 2:23-cv-00033-JRG-RSP

DISCOVERY ORDER 

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;

(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

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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. 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 asthe 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 othersuch witnesses, provide the disclosure required by Federal Rule of Civil 

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

3. Additional Disclosures. Without awaiting a discovery request,1 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:

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

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

for production.

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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 

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 disclosuresdescribed 

in Paragraphs 1-3 together with:

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A. Written Discovery

a. Plaintiff may serve up to twenty-five (25) interrogatories to Defendant. Defendant 

may serve up to twenty-five (25) interrogatories to Plaintiff.

b. Plaintiff may serve up to twenty-five (25) requests for admission to Defendant.

Defendant may serve up to twenty-five (25) requests for admission to Plaintiff.

c. Notwithstanding the foregoing, each party may also serve twenty-five (25) requests 

for admission that seek an admission as to (a) the authenticity of a particular 

document or thing, (b) the admissibility of a particular document or thing, and/or

(c) whether a document qualifies as a printed publication under 35 U.S.C. § 102, or 

the date(s) of publication or public use/availability of documents and things. Any 

requests for admission listed in points (a)-(c) shall be clearly denoted as such, and 

shall be served separately from any requests for admission subject to the numerical 

limitations above.

B. Fact Depositions of Parties and Non-Parties

a. The total number of non-expert deposition hours taken by each side, including Rule 

30(b)(6) depositions, third-party depositions, and other individual depositions shall 

not exceed forty-five (45) hours. Each deposition of Plaintiff or Defendant shall 

count for at least four (4) hours regardless of the length of the deposition or whether 

it is taken through an interpreter.

b. If a party witness is duly noticed as both a Rule 30(b)(6) witness and a 30(b)(1) 

witness, that deposition shall count both as a Rule 30(b)(6) deposition and a 

30(b)(1) deposition, and any such depositions will be conducted concurrently

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and/or consecutively. A party may designate more than one person to testify 

pursuant to Rule 30(b)(6).

c. Absent a showing of good cause, each deposition will be limited to no more than 1 

day of 7 hours on the record, unless otherwise agreed to in writing by the parties 

prior to such deposition taking place.

d. The number of deposition hours and length of depositions may be modified by 

agreement of the parties or further order of the Court.

C. Expert Depositions

a. The deposition of any expert witness testifying in his capacity as an expert shall be 

limited to seven (7) hours per expert report. For example, an expert providing 

reports regarding infringement and validity may be deposed for fourteen (14) hours. 

Experts shall not be deposed for more than seven (7) hours in one day as set forth 

in Rule 30(d)(1) unless otherwise agreed to by the parties.

D. Representative Products: The parties shall discuss in good faith the feasibility of a 

stipulation as to representative products in order to streamline the case for discovery and 

trial. No party shall argue that this provision constitutes an agreement or finding that a 

stipulation regarding representative products is necessarily appropriate or feasible in this 

particular case.

As used herein, “side” means a party or a group of parties with a common interest. Any party may 

later move to modify these limitations for good cause.

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

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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.

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

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.

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(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.

(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.

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(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.

12. Proposed Stipulations by the Parties Regarding Discovery.

A. Discovery of Expert Materials

a. The Parties agree to the limitations of Federal Rule of Civil Procedure 26 with 

regard to the discovery of expert materials. To the extent not already covered by 

Federal Rule of Civil Procedure 26, the Parties further agree to the following 

limitations regarding the discovery of expert materials.

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b. No conversations or communications between or including any Party or its counsel 

and any testifying or non-testifying expert, or between or including any testifying 

expert and any non-testifying expert, including emails, written agreements, or 

correspondence, and notes or outlines pertaining thereto, whether drafted or 

occurring in connection with this Action or any prior or pending investigation, 

litigation, or proceeding (including inter partes review or reexamination 

proceedings before the USPTO), will be subject to discovery or examination at any 

deposition, hearing, or trial unless the conversations or communications are relied 

upon by a testifying expert in formulating his or her final report or any opinion in 

this Action.

c. All materials generated by any testifying expert in connection with this Action are 

exempt from discovery, unless relied upon by a testifying expert in formulating his 

or her final report or any opinion in this Action, or unless relied upon by an expert 

at his or her deposition. Testifying experts shall not be subject to discovery or 

examination at any deposition, hearing, or trial on any draft of their expert reports, 

draft declarations, and draft affidavits, nor notes or outlines pertaining thereto, 

whether drafted in connection with this Action or any prior or pending 

investigation, litigation, or proceeding (including inter partes review or 

reexamination proceedings before the USPTO).

d. Discovery of materials provided to testifying experts, whether provided in 

connection with this Action or any prior or pending investigation, litigation, or 

proceeding (including inter partes review or reexamination proceedings before the 

USPTO), shall be limited to those materials, facts, non-testifying expert opinions,

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and other matters actually relied upon by a testifying expert in formulating his or 

her final report or any opinion in this Action.

e. Non-testifying experts shall not be subject to discovery, except to the extent a 

testifying expert is relying on the work or opinions of a non-testifying expert in 

formulating his or her final report or any opinion in this Action. Where a testifying 

expert is relying on the work or opinions of a non-testifying expert, discovery can 

be taken from the non-testifying expert with the same limitations that apply to 

testifying experts, but discovery shall be limited to the information provided to the 

testifying expert that the testifying expert is relying on in formulating his or her 

final report or any opinion in this Action and the basis for such information.

B. The parties may serve documents (both filings and non-filings) by email, or if too 

voluminous, by FTP or other file transfer service.

C. Production of ESI: Compliance with the Court’s disclosure obligations shall include email or other forms of electronic correspondence only to the extent necessary to sufficiently 

meet those obligations. The parties shall propose a separate order providing stipulations 

regarding production of electronically stored data, including e-mails.

D. Notwithstanding the provisions of Paragraph 6, the parties agree that privilege logs need 

not be exchanged. However, in the event a dispute arises where a party believes that the 

production of a privilege log limited in scope may be appropriate, the parties agree to meet 

and confer in good faith regarding the propriety and scope of such a privilege log. No party 

is required to log privileged or work-product materials dated after the filing date of the 

complaint in this case (January 27, 2023).

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E. A party who serves a subpoena in this matter on a third party shall immediately provide a 

copy to the other party within three (3) business days. A party who receives documents 

from a third party pursuant to a subpoena will promptly reproduce those documents to the 

other party. 

F. Inadvertent Production: Nothing in this Order shall require production of documents, 

information or other material that a Party contends is protected from disclosure by the 

attorney-client privilege, the work product doctrine, or other privilege, doctrine, or 

immunity. If documents, information or other material subject to a claim of attorney-client 

privilege, work product doctrine, or other privilege, doctrine, or immunity is inadvertently 

or unintentionally produced, such production shall in no way prejudice or otherwise 

constitute a waiver of, or estoppel as to, any such privilege, doctrine, or immunity. Any 

Party that inadvertently or unintentionally produces documents, information or other 

material it reasonably believes are protected under the attorney-client privilege, work 

product doctrine, or other privilege, doctrine, or immunity may request destruction of such 

documents, information or other material by promptly notifying the recipient(s) and 

providing a privilege log for the inadvertently or unintentionally produced documents, 

information or other material. The recipient(s) shall destroy all copies of such documents, 

information or other material to the producing Party. This Order constitutes a Federal Rule 

of Evidence 502(d) order, establishing that any inadvertently produced material subject to 

the attorney-client privilege or work product immunity is not a waiver.

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 

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

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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.

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