IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ANALYTICAL TECHNOLOGIES, LLC,

 Plaintiff,

 v.

JACK IN THE BOX INC.

 Defendant

CASE NO. 2:24-cv-00052-JRG-RSP

 (Lead Case)

ANALYTICAL TECHNOLOGIES, LLC,

 Plaintiff,

 v.

ZAXBY’S FRANCHISING LLC,

 Defendant

CASE NO. 2:24-cv-00056-JRG-RSP

 (Consolidated Case)

DISCOVERY ORDER FOR PATENT CASES

ASSIGNED TO JUDGE RODNEY GILSTRAP AND JUDGE ROY PAYNE

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;

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(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 

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).

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

paragraph numbers.

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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:

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

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

for production.

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(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 disclosures described 

in Paragraphs 1-3 together with: 40 interrogatories per side, 40 requests for admissions per side, 

the depositions of the parties, depositions on written questions of custodians of business records 

for third parties, 60 hours of nonparty depositions per side, and 3 expert witnesses per side. “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 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 

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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.

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, 

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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. 

(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 CV-26(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 

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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. None.

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’swebsite

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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