Exhibit A

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UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

 v.

AT&T SERVICES, INC., AT&T 

MOBILITY, LLC, and AT&T CORP.,

Defendants.

Civil Action No. 2:23-cv-00397-JRG-RSP

(Lead Case)

JURY DEMANDED

HEADWATER RESEARCH LLC,

Plaintiff,

 v.

AT&T SERVICES, INC., AT&T 

MOBILITY, LLC, and AT&T CORP.,

Defendants.

Civil Action No. 2:23-cv-00398-JRG-RSP

JURY DEMANDED

ORDER REGARDING E-DISCOVERY

The Court ORDERS as follows:

1. This order supplements all other discovery rules and orders. It streamlines Electronically 

Stored Information (“ESI”) production to promote a “just, speedy, and inexpensive 

determination” of this action, as required by Federal Rule of Civil Procedure 1.

2. This order may be modified in the Court’s discretion or by agreement of the parties. If the 

parties cannot resolve their disagreements regarding any modifications, the parties shall 

submit their competing proposals and a summary of their dispute.

3. A party’s meaningful compliance with this order and efforts to promote efficiency and 

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reduce costs will be considered in cost-shifting determinations.

4. Absent a showing of good cause, general ESI production requests under Federal Rules of 

Civil Procedure 34 and 45, or compliance with a mandatory disclosure requirement of this 

Court, shall not include metadata. However, to the extent such metadata is applicable to an 

individual item and is already within the producing Party’s possession, custody, or control, 

the following fields shall generally be included in the production if such fields exist:

A. Title;

B. Filename;

C. Creation date and time;

D. Modification date and time;

E. Author;

F. Subject line;

G. Distribution list (e.g., “To,” “Cc,” and “Bcc” fields);

H. Date and time sent;

I. Date and time received.

J. Beginning Document Number;

K. Ending Document Number;

L. BegAttach (the Beginning Document Number of the parent document);

M. EndAttach (the Ending Document Number of the last attachment);

N. FileExt (the extension of the filename, e.g., “DOC” for an MS Word 

document);

O. Filepath (for loose electronic files this should be the filepath to the 

document location in the original environment. However, for emails this 

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should be the internal folderpath where the email was stored, e.g., Doe, 

Jane.pst\inbox);

5. Absent agreement of the parties or further order of this Court, the following parameters 

shall apply to ESI production:

A. General Document Image Format. Each electronic document shall be 

produced in single-page Tagged Image File Format (“TIFF”) format. Each 

electronic document shall be single page and named with a unique 

production number followed by the appropriate file extension. If a 

document contains attachments (e.g., an attachment to an email), such 

attachments shall be separately produced as electronic documents. Load 

files shall be provided to indicate the location of produced electronic 

documents, identify any attachments to electronic documents through 

unitization information, and identify any metadata of produced electronic 

documents.

B. Email Threading: Where multiple email messages are part of a single 

“thread,” a Party is only required to produce the most inclusive message 

for which no claim of privilege is made, and need not produce earlier, less 

inclusive email messages that are fully contained, including attachments, 

within the most inclusive email message for which no claim of privilege is 

made. For the avoidance of doubt, if the later message contains different 

text (such as where the later message adds in-line comments to the body 

of the earlier message), or does not include an attachment that was part of 

the earlier message, the earlier message must be produced.

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C. Text-Searchable Documents. No party has an obligation to make its 

production text-searchable; however, if a party’s documents already exist 

in any text-searchable format independent of this litigation, or are 

converted to text-searchable format for use in this litigation, including for 

use by the producing party’s counsel, then such documents shall be 

produced in the same text-searchable format at no cost to the receiving 

party.

D. Footer. Each page of any document produced in electronic image format 

shall contain a footer with a sequentially ascending production number.

E. Native Files. A party that receives a document produced in an image

format (e.g., TIFF) may make a reasonable request to receive the document 

in its native format, and upon receipt of such a request, the producing party 

shall produce the document in its native format. The parties agree that 

spreadsheets of more than a single page shall be produced in native format. 

The parties further agree that Portable Document File (PDF), Microsoft 

Word, and PowerPoint documents, containing tracked changes, 

comments, animations, or notes that would otherwise not be visible in an 

image format, shall be produced in native format.

F. Illegible Documents. The Parties will accommodate reasonable requests 

for production of legible copies of specific documents previously produced 

as a JPG/TIFF file.

G. No Backup Restoration Required. Absent a showing of good cause, no 

party need restore any form of media upon which backup data is 

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maintained in a party’s normal or allowed processes, including but not 

limited to backup tapes, disks, SAN, and other forms of media, to comply 

with its discovery obligations in the present case.

H. Additional Non-Discoverable Documents: Consistent with the 

proportionality standard, and absent a party’s specific written notice for 

good cause, the following categories of ESI are presumed to be 

inaccessible and not discoverable:

i. ESI deleted in the normal course of business before the time a 

preservation obligation in this matter came into effect;

ii. Deleted, “slack,” fragmented, or unallocated data only accessible 

by forensics;

iii. Random access memory (RAM), temporary files, or other 

ephemeral data that are difficult to preserve without disabling the 

operating system;

iv. On-line access data such as (without limitation) temporary internet 

files, history files, cache files, and cookies;

v. Data in metadata fields frequently updated automatically, such as 

last-opened or last-printed dates;

vi. Electronic data (e.g., call logs, email, calendars, contact data, notes, 

etc.) sent to or from mobile devices (e.g., iPhones, iPads, Android 

devices, Blackberry devices, etc.), if a copy of such electronic data 

is routinely saved elsewhere (such as on a server, laptop, desktop 

computer, or “cloud” storage);

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vii. Voicemails, text messages, and instant messages sent to/received 

by mobile devices, PDAs, VOIP phones, traditional phones, and/or 

mobile phones.

viii. PDAs and mobile phones are deemed not reasonably accessible 

and need not be collected and preserved;1

ix. Server, system, network, or software application logs;

x. Electronic data temporarily stored by laboratory equipment or 

attached electronic equipment, provided that such data is not 

ordinarily preserved as part of a laboratory report;

xi. Data or documents on external media and thumb drives; provided 

that such devices are not used in the ordinary course of business or 

a copy of information on such devices is routinely saved or is 

available elsewhere; 

xii. Data and documents hosted on personal social media accounts (as 

opposed to corporate accounts), including Twitter, Facebook, etc.

6. General ESI production requests under Federal Rules of Civil Procedure 34 and 45, or 

compliance with a mandatory disclosure order of this Court, shall not include e-mail or 

other forms of electronic correspondence (collectively “e-mail”). To obtain e-mail, parties 

must propound specific e-mail production requests.

7. E-mail production requests shall be phased to occur timely after the parties have exchanged 

1 This provision is intended to address devices used by the parties and others subject to production obligations, and 

is not intended to otherwise impact discovery obligations with respect to accused instrumentalities.

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initial disclosures, a specific identification2 of the twelve (12) most significant likely e-mail 

custodians,

3 to the extent such custodians exist, in view of the pleaded claims and defenses, 

infringement contentions and accompanying documents pursuant to P.R. 3-1 and 3-2, 

invalidity contentions and accompanying documents pursuant to P.R. 3-3 and 3-4, and 

preliminary information relevant to damages. The exchange of this information shall occur 

at the time required under the Federal Rules of Civil Procedure, Local Rules, or by order of 

the Court. 

8. E-mail production requests shall identify the custodian, search terms, and time frame. The 

parties shall cooperate to identify the proper custodians, proper search terms, and proper 

time frame. Each requesting party shall limit its e-mail production requests to a total of 

eight (8) custodians per producing party for all such requests. The parties may jointly agree 

to modify this limit without the Court’s leave. The Court shall consider contested requests 

for additional or fewer custodians per producing party, upon showing a distinct need based 

on the size, complexity, and issues of this specific case.

9. Each requesting party shall limit its e-mail production requests to a total of ten (10) search 

terms per custodian per party. The parties may jointly agree to modify this limit without the 

Court’s leave. The Court shall consider contested requests for additional or fewer search 

terms per custodian, upon showing a distinct need based on the size, complexity, and issues 

of this specific case. The search terms shall be narrowly tailored to particular issues. 

Indiscriminate terms, such as the producing company’s name or its product name, are 

2 A “specific identification” requires a short description of why the custodian is believed to be 

significant.

3 For the avoidance of doubt, each party will identify the custodians currently or formerly affiliated 

with the other party.

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inappropriate unless combined with narrowing search criteria that sufficiently reduce the 

risk of overproduction. A conjunctive combination of multiple words or phrases (e.g., 

“computer” and “system”) narrows the search and shall count as a single search term. A 

disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) 

broadens the search, and thus each word or phrase shall count as a separate search term 

unless they are variants of the same word. Use of narrowing search criteria (e.g., “and,” 

“but not,” “w/x”) is encouraged to limit the production and shall be considered when 

determining whether to shift costs for disproportionate discovery. If a party objects to a 

search term(s) on the ground that it would be too burdensome to produce all documents that 

hit on that term, the party shall produce a hit count to the requesting party identifying the 

hit counts per search term where possible. If a combination of search terms for a given 

custodian results in an excessive number of hits, the parties will confer in good faith to limit 

the terms and resolve disputes. If the parties are unable to reach an agreement to limit the 

terms, either party may seek relief from the court. 

10. The parties shall endeavor to produce email attachments sequentially after the parent email. 

11. The parties further agree that, unless good cause is shown, the parties subject to this order 

need not search for or produce e-mail created after the filing of the complaint.

12. Pursuant to Federal Rule of Evidence 502(d), the inadvertent production of a privileged or 

work product protected ESI is not a waiver in the pending case or in any other federal or 

state proceeding.

13. The mere production of ESI in a litigation as part of a mass production shall not itself 

constitute a waiver for any purpose. Nothing in this protocol shall be interpreted to require 

disclosure of irrelevant information or relevant information protected by the attorney-client 

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privilege, work-product doctrine, or any other applicable privilege or immunity. The parties 

do not waive objections as to the production, discoverability, admissibility, or 

confidentiality of documents and ESI. 

14. Except as expressly stated, nothing in this order affects the parties’ discovery obligations 

under the Federal or Local Rules.

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