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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

VERIZON COMMUNICATIONS, INC.; 

CELLCO PARTNERSHIP D/B/A VERIZON 

WIRELESS,

Defendants.

ERICSSON INC.; 

NOKIA OF AMERICA CORPORATION,

Intervenors.

Case No. 2:23-cv-00470-JRG-RSP

(LEAD CASE)

JURY TRIAL DEMANDED

[PROPOSED] 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);

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(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 

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:

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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(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 

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 

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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 disclosures described 

in Paragraphs 1-3 together with:

(a) Interrogatories: Plaintiff may not serve more than 20 common interrogatories on 

Defendants (as defined below), collectively, and 15 individual interrogatories on 

each Defendant Group (as defined below). Defendants may not serve more than 

20 common interrogatories on Plaintiff, collectively, and each Defendant Group 

may not serve more than 15 individual interrogatories on Plaintiff.

(b) Requests for Admissions: No Defendant Group, nor Plaintiff, shall serve more 

than 40 Requests for Admission on substantive issues not related to the 

authentication of documents.

(c) Deposition Notices: Deposition discovery may commence at any time. However, 

before depositions of the Parties commence, each side (as defined below) will serve 

their Rule 30(b)(6) notice(s) in an effort to avoid either side having to reproduce 

any fact witnesses as a corporate designee. Witnesses shall not be recalled absent 

good cause. Notwithstanding the foregoing, this shall not preclude a party from 

serving a supplemental Rule 30(b)(6) notice(s) that is limited to topics that could 

not have been anticipated at the time the initial notice was served.

(d) Depositions of party fact witnesses: 

• Each Defendant Group shall be subject to a maximum of 45 hours of depositions.

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• Plaintiff shall be subject to a maximum of 45 hours of deposition. To reduce 

redundancy and inconvenience to the Parties, the Defendants may coordinate and 

allocate those hours to subjects common to all Defendants and to testimony that is 

specific to each Defendant Group.

• Regardless of the actual length of record time, for any witness a party chooses to 

depose who is not designated as a 30(b)(6) witness, each deposition shall count for 

a minimum of 3.5 hours of record time.

• Party fact witnesses include a party’s corporate designees under FRCP 30(b)(6) and 

a party’s directors, officers, employees, agents, and representatives deposed in their 

individual capacity under FRCP 30(b)(1). The Parties shall endeavor to depose any 

party fact witnesses within one day.

• Each party reserves the right to seek an adjustment of these time limits based upon 

changes to the scope of discovery, the number of witnesses identified in initial 

disclosed, or the addition or dismissal of any Parties, in this case. These provisions, 

further, may be amended by agreement of the Parties.

The above cumulative limits on deposition time do not constitute any agreements by the 

Parties that an opposing Party is entitled to take its maximum hours of testimony from 

them; nor does this cumulative limit alter the limitation on each deposition’s duration 

specified under the Federal Rules. The deposition provided for in the Court’s model ESI 

order is excluded from this deposition limit.

(e) Third-party Depositions: Third-party depositions shall be subject to the 7-hour 

duration limits specified under the Federal Rules. Each side may take a total of 42 

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hours of third-party depositions (excluding inventor, prior artist, and expert 

depositions).

(f) Named Inventors or Prior Artists: The parties may take 42 hours of named 

inventor depositions or prior art depositions per side. The Parties shall meet and 

confer in advance of each noticed deposition of a named inventor or prior artist to 

determine the appropriate number of deposition hours (if any) for such inventor or 

prior artist. The Parties will also confer about any other deposition logistics such as 

location, start time, and approved interpreter. Fact deposition testimony of 

inventors or prior artists is exclusive of any time the inventor or prior artist spends 

testifying as a designated expert witness or a corporate representative.

(g) Expert Depositions: The Parties shall meet and confer in advance of each expert 

deposition to determine the appropriate number of hours of deposition per expert, 

but generally, no single expert will be deposed for more than 7 hours total per 

report. The Parties will meet and confer in the event that a Party feels that more 

than 7 hours is needed for the deposition of any expert. Notwithstanding the 

foregoing, if an expert offers [non]infringement or damages opinions in a single 

report for or against more than one Defendant Group, that expert may be deposed 

for an additional 3 hours for each additional Defendant Group for which he offers 

opinions (e.g., if an expert offers infringement opinions for both the AT&T and 

Verizon Defendant Groups, he may be deposed for 10 hours; if he offers 

infringement opinions for each of the AT&T, Verizon, and T-Mobile Defendant 

Groups, he may be deposed for 13 hours). If any party serves a supplemental expert 

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report, the Parties will meet and confer on whether any deposition is needed and if 

so, what the duration of the deposition should be.

(h) FRCP 30(a)(2)(i). The parties do not need to obtain leave of Court under Federal 

Rule of Civil Procedure 30(a)(2)(i) to take a deposition in accordance with the 

above deposition limits in subparts (d)-(h) even if a deposition would result in more 

than 10 depositions being taken. 

(i) Translated depositions: For any deposition that requires translation between 

English and any foreign language, the time limits set forth above shall be doubled, 

wherein if an entire deposition is translated, the taking party is entitled to 14 hours 

of deposition time of which 7 hours shall count towards the deposition limits 

established in this Order. In no event however shall a witness be required to testify 

for more than 7 hours of actual deposition time during any single day unless 

otherwise stipulated or ordered.

(j) Definitions: “Side” means a party or a group of parties with a common interest, 

i.e., Defendants, including any intervening parties, comprise one side and the 

Plaintiff comprises the other side. A “Defendant Group” is the group of commonly 

accused Defendants identified in a single complaint, i.e., the AT&T Defendant 

Group is AT&T Corp., AT&T Mobility LLC, and AT&T Services, Inc.; the 

Verizon Defendant Group is Verizon Communications Inc. and Cellco Partnership 

dba Verizon Wireless; and the T-Mobile Defendant Group is T-Mobile USA Inc. 

Further, each intervenor constitutes its own Defendant Group (“Intervenor Group”) 

such that the Nokia Defendant Group is Nokia of America Corporation; and the 

Ericsson Defendant Group is Ericsson Inc.

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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 

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 

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

this Order have taken place.

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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.

(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). 

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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.

12. Proposed Stipulations by the Parties Regarding Discovery. 

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(a) Privilege Log: No party shall have an obligation to identify on a privilege log any 

privileged communication dated on or after May 8, 2023.

(b) E-Discovery Order: Paragraph 3 of this Discovery Order does not apply to email 

discovery. The parties shall meet and confer regarding the Model Order Regarding 

E-Discovery in Patent Cases, including any modifications thereto. A proposed 

order shall be submitted within two weeks after entry of this order. 

(c) Expert Discovery: The parties shall not seek discovery of draft expert reports or 

declarations. Other than as permitted under Rule 26(b)(4)(C)(i)-(iii) of the Federal 

Rules of Civil Procedure, the parties shall not seek discovery of an expert’s notes, 

drafts, or communications with counsel except to the extent the expert consults 

them while testifying at deposition or trial.

(d) Third Party Discovery: A party that receives a production and/or responses and 

objections in response to a third-party discovery request must serve a copy of that 

production and the response on all other parties within five (5) days of receipt.

(e) Email Service: The parties agree to accept service by email to all counsel of record 

for the party to be served.

(e) Inadvertent Production: 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 in this or any other federal or state proceeding. In case of 

inadvertent production, at the producing party’s request, the receiving party shall 

immediately return or destroy the inadvertently produced materials. The producing 

party will provide a privilege log in accordance with Paragraph 6 even if the 

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inadvertently produced materials were created on or after the date of the Complaint 

in the applicable action.

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.

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