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IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

HANSHOW TECHNOLOGY CO., LTD. AND 

SHANGHAI HANSHI INFORMATION 

TECHNOLOGY CO., LTD. 

Plaintiffs, 

v. 

SES-IMAGOTAG SA, SES-IMAGOTAG GMBH 

AND CAPTANA GMBH 

Defendants.

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Case No. 2:23-cv-00617-RWS-RSP

[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); 

(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 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,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: 

P.R. 3-1(g): 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. 

1

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

for production. 

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P.R. 3-3(e): If a party claiming patent infringement exercises the 

provisions of P.R. 3-1(g), the party opposing a claim of patent 

infringement may serve, not later than 30 days after receipt of a P.R. 

3-1(g) 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 disclosures described 

in Paragraphs 1-3 together with: 

 50 interrogatories per side;2

 

 50 requests for admissions3

 per side; 

 the depositions of the parties, 

2

 “Side” means a party or a group of parties with a common interest. 

3

 Notwithstanding the foregoing, there shall be no limitation on the number of requests for 

admission any Party may use solely for the purpose of authentication of evidence. 

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 depositions on written questions of custodians of business records for third parties; 

 60 hours of nonparty depositions per side; and 

 5 expert witnesses per side. 

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. 

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) In addition to the 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 

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effort to resolve the dispute without Court intervention. Counsel shall promptly 

notify the Court of the results of that meeting by filing a joint report of no more 

than 2 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). 

(c) 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: 

 Service: The Parties consent and agree, pursuant to Rule 5(b)(2)(E) of the Federal Rules of 

Civil Procedure, that service may be made by electronic mail with copies sent to all 

attorneys of record for the Party served. Notwithstanding the foregoing, to the extent 

service by email is impractical, the Parties agree to serve the discovery request, response 

to discovery, pleading, or other document by file-transfer protocol (FTP) or overnight 

delivery. 

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 Timing: The Parties consent and agree that service of any discovery request that triggers a 

deadline of the other party (e.g., service of interrogatories, requests for production, requests 

for admissions, or discovery motion briefing) shall be considered served on a particular 

day only if service is made before 5:00 pm Central Time on a day that the Court is in 

official operation (e.g., not a weekend or holiday of the Court). Any service made after 

5:00 pm Central Time on a day the Court is in official operation or made on a weekend or 

holiday of the Court shall be considered served on the next day that the Court is in official 

operation. 

 Privilege Logs: Neither party is required to log privileged materials dated on or after April 

17, 2023. In addition, (i) privileged or attorney work-product materials created by or on 

behalf of outside litigation counsel regarding the litigation in which such counsel represent 

their client; and (ii) communications between a client and its litigation counsel regarding 

the litigation in which such counsel represent their client, do not need to be included on 

any privilege log regardless of their date. The parties reserve the right to request logs of 

specific kinds of privileged materials otherwise excluded by the foregoing where good 

cause exists, such as a specific challenge to withheld discovery.

 Inadvertent Disclosure: 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 Paragraphs 6 and 12 to the extent required under this 

Order.

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 Third-Party Discovery: The parties will serve each other with copies of any subpoena or 

deposition notice directed to a third-party on or before the day the subpoena or notice is 

served on the third-party. A party who serves a subpoena in this case on a third party shall 

provide a copy to the other party prior to service of that subpoena as required by Fed. R. 

Civ. P. 45(a)(4). A party who receives documents from a third party pursuant to a subpoena 

will reproduce those documents to the other party within three business days. Where 

reproduction of documents within 3 business days is not possible, the party who received 

the documents will provide prompt notice to the other parties of receipt of the documents 

and will work in good faith to resolve the issue on a case-by-case basis. The parties shall 

reasonably cooperate regarding the scheduling of depositions of subpoenaed third parties.

IT IS SO ORDERED. 

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