1. law, govt and politics

25 April 2013
ITC Trial Lawyers Association
SAMPLE ITC SECTION 337 STIPULATIONS1
TABLE OF CONTENTS
0. Preamble
1. Electronic service
2. Password protection
3. Electronically stored information
4. Form of document production
5. Inadvertent Disclosure of Privileged Materials
6. Inadvertent Failure to Designate as Confidential Business Information
7. Discovery of expert materials
8. Logging of privileged documents
9. Source code
10. Discovery Committee
11. Third-party discovery materials
12. Reliance on other parties' discovery requests
13. Use of joint and/or other parties’ experts
14. Cross-use of materials from/in other litigation
15. Representative accused products
16. Importation
17. Confirmation of CBI
18. Discovery of Communication with Support Staff
19. Document Use/Authentication
20. Hearing Logistics
21. Miscellaneous (Trial Equipment; Translations; Objections to Witness Statements,
Deposition Designations, and Requests for Receipt of Evidence Without a Sponsoring
Witness)
1
The stipulations referenced in this document are representative; it is not a complete set of
stipulations or possible stipulations. There are no warranties or representations that these
stipulations will be accepted by an Administrative Law Judge or the International Trade
Commission or that they will necessarily serve their intended function. This document does not
provide legal advice, and such advice should be obtained before any stipulation is used.
Note that a particular subject may be preempted in whole or part by changes to the Commission
regulations or to the Ground Rules or Orders of one or more of the ITC Administrative Law
Judges. For example, Chief Judge Bullock and Judge Essex recently adopted a procedure to
address electronic discovery issues. See, e.g., Exhibit B to Attachment A to Order No. 2 (Notice
of Ground Rules; Order Setting Date for Submission of Joint Discovery Statement), Inv. No.
337-TA-869 (Feb. 12, 2013); Exhibit B to Attachment A to Order No. 2 (Notice of Ground
Rules; Order Setting Date for Submission of Joint Discovery Statement; and Order Setting Date
for Preliminary Conference), Inv. No. 337-TA-871 (Mar. 1, 2013).
0.
Preamble
Complainants [_____] and [_____] ( “__________” or “Complainants”) and Respondents
[_____] and [_____] (collectively, “Respondents”), (collectively, the “Private Parties”), by and
through their respective counsel, hereby stipulate and agree as follows.
2
ITCTLA, Sample ITC Section 337 Stipulations
1.
Electronic Service
(a) COMPLAINANT and RESPONDENT will serve all pleadings, motions, discovery requests
and responses, and all other papers that must be served on the other party, by e-mail.
(b) Any document filed with the Commission and served by e-mail before 7:00 p.m. Eastern
Standard Time on a business day will be considered as having been served by hand delivery on
that day. Any document filed with the Commission and served by e-mail after 7:00 p.m. E.S.T or
not served on a business day shall be considered as having been served by hand delivery on the
next business day.
(c) For discovery requests, discovery responses, and other documents not filed with the
Commission, service by e-mail before 7:00 p.m. E.S.T on a business day will be considered as
having been served by hand-delivery on that day. Any discovery request, discovery response, or
other document not filed with the Commission that is served by e-mail after 7:00 p.m. E.S.T or
not served on a business day shall be considered as having been served by hand-delivery on the
next business day.
(d) COMPLAINANT and RESPONDENT agree to serve Microsoft Word versions of discovery
requests. The Investigative Attorney will provide versions of discovery requests in a wordprocessing format.
(e) When the document(s) for service exceeds 10 MB, the serving party shall either divide the
documents into a series of e-mails each of a size less than 10 MB, or serve the documents by
password-protected file transfer protocol ("FTP"). If the latter option is chosen, the serving party
must e-mail the FTP site password or other login information to the other parties by 7:00 p.m.
E.S.T.
(f) COMPLAINANT, RESPONDENT and the Investigative Attorney designate the following email addresses for purposes of receiving documents served pursuant to this Stipulation: [TO BE
SUPPLIED]
(g) Documents and other materials produced in response to Requests for Production are not
subject to this stipulation regarding electronic service. Except for oversized or physical materials
that cannot practically be produced in digital or electronic format, any documents, electronically
stored information, and other materials produced in response to Requests for Production shall be
produced on CDs, DVDs, hard drives, or other conventional media and shall be delivered by
hand or overnight delivery to the following addresses:
(i) For COMPLAINANT:
(ii) For RESPONDENT:
(iii) For Staff:
[TO BE SUPPLIED]
Investigative Attorney
3
ITCTLA, Sample ITC Section 337 Stipulations
Office of Unfair Import Investigations
U.S. International Trade Commission
500 E Street SW
Washington, DC 20436
The parties agree that materials responsive to discovery requests will be produced via hand or
overnight delivery or may be produced for inspection and copying at the producing party's
location or at a reasonable, agreed upon location after discussion with the requesting party.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
OR
(a) The Private Parties agree that all documents filed with the Secretary or submitted to the
Administrative Law Judge shall be served on the other parties at or near the time of filing, but in
no event later than 6:00 p.m. Eastern time on the day of filing or submission. The Private Parties
will serve all other documents no later than 7:00 p.m. Eastern time on the day of service. Service
shall be made by electronic mail, with the filed, served, or submitted documents attached in .pdf
format, except when the size of the file containing any such document is too large for service by
electronic mail (“Large Files”). Service of Large Files will be made by secure FTP to the group
e-mail address lists identified for service. In addition to the secure FTP service copies of the
Large Files, each Private Party shall designate one address for receipt of a hard copy courtesy
copy of the Large Files being served, and such courtesy copies shall be sent by hand delivery or
overnight delivery (early a.m. delivery). Service of all briefs, pleadings, motions, discovery and
other documents in this Investigation after the times identified herein shall be considered to be
served on the following business day.
(b) The Private Parties agree that all discovery requests will be served by electronic mail in a .pdf
format, and shall be accompanied by an identical version in .docx format. The Private Parties
further agree that all responses and objections thereto (but not documents produced pursuant to
any such request) shall be served by electronic mail.
(c) For all documents served by electronic mail in accordance with paragraphs 1 and 2 above that
contain Confidential Business Information (“CBI”), the Private Parties may password-protect the
attached .pdf files. To the extent a party chooses to password protect the files containing CBI,
that party will share a single password for access to such protected files exchanged during this
Investigation. Aside from password protection, for all documents other than source code, the
Private Parties agree not to place any other restrictions on the documents’ properties (including
but not limited to restricting access to print the document or restricting the ability to save the
document in a new location). To the extent any of the Private Parties or the OUII Staff seek the
production of source code, the Private Parties and Staff agree to negotiate in good faith a
protective order to govern the production of source code in this Investigation.
(d) The parties designate the following counsel to receive service of documents served pursuant
to this stipulation.
4
ITCTLA, Sample ITC Section 337 Stipulations
[TO BE SUPPLIED]
SOURCE: Stipulation Among the Parties, ITC Inv. No. 337-TA-860 (Nov. 26, 2012).
OR
(a) The Private Parties agree that electronic service shall be the official form of service in this
Investigation for all documents filed with the Commission, submitted to the Administrative Law
Judge, or that are otherwise served pursuant to Commission Rule 201.16 or the Ground Rules.
Electronic service of documents under 20 megabytes in .PDF format to the “Electronic Mail
Service List” addresses designated in Paragraph 3, below, shall be deemed effective for service
on the Private Parties. For documents over 20 megabytes or other documents that cannot be
efficiently served by email, service shall be deemed effective if (a) the Private Party place(s) the
documents on a secure File Transfer Protocol (FTP) host or other similar secure service or site
for those Parties that have consented to service via FTP; or (b) the Private Party delivers the
documents in .PDF file(s) on a CD, DVD, Flash Drive, HDD, or other electronic media by hand
delivery to the Designated Counsel of Record for Hand Delivery set forth in Paragraph 3, below.
For those parties represented by counsel outside the metropolitan Washington, DC area and who
have not consented to service by FTP, in lieu of Hand Delivery service shall be by priority
overnight, first available morning or Saturday delivery with the tracking information sent to that
counsel.
For all documents, including those filed with the Commission or submitted to the Administrative
Law Judge, electronic service (by email, by notice of its availability via FTP for those Parties
that have consented to service via FTP, or by hand delivery) by 6:30 p.m. Eastern Time
constitutes timely service on that day for all purposes. Such documents served by electronic mail
or hand delivery at or after 6:31 p.m. Eastern Time shall be considered as served on the next
business day unless the parties being served consent to such later service or waive this
requirement for any document served.
(b) All discovery requests will be served by electronic mail in a searchable .PDF format, and
shall be accompanied by an identical version in .DOC format. The Private Parties further agree
that all responses and objections thereto (but not documents produced pursuant to any such
request) shall be served by electronic mail. All documents produced pursuant to any discovery
request shall be served by FTP for those Parties that have consented to service via FTP, hand
delivery for delivery on the day of production, or by overnight mail for delivery the next
business day after the day of production, at the producing party’s election. When service is by
overnight mail, the producing party shall send via electronic mail a copy of any cover letter
accompanying the production; such copy shall be transmitted at the time of mailing.
Verifications of interrogatory responses shall be served within ten business days after service of
the interrogatory response.
(c) Electronic service shall be accomplished by sending the documents described in
Paragraphs 1 and 2 as follows: [LIST RECIPIENTS AND EMAIL AND HAND-DELIVERY
ADDRESSES]. The Private Parties agree that only individuals permitted access to documents
5
ITCTLA, Sample ITC Section 337 Stipulations
containing Confidential Business Information (CBI) pursuant to the Protective Order will be
included in the above email distribution addresses.
In accordance with Commission Rule 201.16(f), the Private Parties will submit a joint motion
requesting consent to serve documents by electronic means, as set forth above.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
6
ITCTLA, Sample ITC Section 337 Stipulations
2.
Password Protection
For all documents served by electronic mail in accordance with paragraphs __________ above
that contain Confidential Business Information (“CBI”), the Private Parties may passwordprotect the attached .pdf files. To the extent a party chooses to password protect the files
containing CBI, that party will share a single password for access to such protected files
exchanged during this Investigation. Aside from password protection, for all documents other
than source code, the Private Parties agree not to place any other restrictions on the documents’
properties (including but not limited to restricting access to print the document or restricting the
ability to save the document in a new location).
SOURCE: Stipulation Among the Parties, ITC Inv. No. 337-TA-860 (Nov. 26, 2012).
OR
Each private party agrees that, for documents served by electronic mail in accordance with
paragraphs 1 and 2 above that contain CBI of another party, the Private Party agrees to
password-protect the attached .PDF files. The Private Parties will share a single password for
access to such protected files exchanged during this Investigation. Aside from password
protection, the Private Parties agree that they will not place any other restrictions on the
documents’ properties (such as restricting access to print the document, cut and paste, or
restricting the ability to save the document in a new location).
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
7
ITCTLA, Sample ITC Section 337 Stipulations
3.
Electronically Stored Information
(a) The Private Parties agree that no voicemail, instant messages, text messages, or materials that
may be archived and/or retained in tape, floppy disc, optical disc or similar media for backup or
disaster recovery shall be searched for or produced unless good cause for the production can be
shown, and further subject to the producing party’s claim of undue burden or cost. The Private
Parties shall meet and confer as to good cause on this issue.
(b) Materials retained in tape, floppy disk, optical disk, or similar formats primarily for back-up
or disaster recovery purposes are deemed not reasonably accessible under Fed. R. Civ. P.
26(b)(2)(B) and, accordingly, are not subject to production unless specific facts demonstrate a
particular need for such evidence that justifies the burden of retrieval. Archives stored on
computer servers, external hard drives, notebooks, or personal computer hard drives that are
created primarily for back-up or disaster recovery purposes and not used as reference materials in
the ordinary course of a Private Party’s business operations need not be searched or produced
absent good cause, and further subject to the producing party’s claim of undue burden or cost or
other objections. No Private Party need deviate from the practices it normally exercises with
regard to preservation of such “tape, floppy disk, optical disk, or similar formats primarily for
back-up or disaster recovery purposes” that it does not otherwise exercise when not in
anticipation of litigation (e.g., recycling of back-up tapes is permitted).
(c) If responsive documents are located on a centralized server or network, the producing Private
Party shall not be required to search for additional copies of such responsive documents that may
be located on the personal computer, or otherwise in the possession, of individual employees
absent a showing of good cause that the production of such additional copies is necessary. No
Private Party need deviate from the practices it normally exercises with regard to preservation of
such “additional copies” that it does not otherwise exercise when not in anticipation of litigation
(e.g., recycling of back-up tapes is permitted).
(d) The Private Parties agree to the following protocol with respect to email discovery, which
may be modified by agreement or upon a showing of good cause. If a Private Party seeks email
through discovery, that Party’s email production requests shall specifically identify the email
custodian, search terms for searching that custodian’s email, and a time frame. Each requesting
party shall limit its e-mail production requests to a total of up to eight (8) custodians per
producing party. Further, each requesting party shall limit its e-mail production requests to a total
of up to ten (10) search terms per custodian per party. The search terms shall be narrowly
tailored to particular issues. Indiscriminate terms, such as the producing company’s name or its
product name, are 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.
8
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-857 (Nov. 6, 2012).
OR
(a) Production of Electronically Stored Information ("ESI") shall not include metadata absent a
showing of good cause. Fields showing the date and time that the document was sent and
received, as well as the complete distribution list, shall generally be included in the production.
(b) The production of ESI shall not include email or other forms of electronic correspondence
(collectively “email”). To obtain email, parties must propound specific email production
requests.
(c) Email production requests shall only be propounded for specific issues, rather than general
discovery of a product or business.
(d) Email production requests shall be phased to occur after the parties have exchanged initial
disclosures and basic documentation about the patents, the prior art, the accused
instrumentalities, and the relevant finances.
(e) Each requesting party shall limit its email production requests to a total of five custodians per
producing party. Producing party shall be interpreted in this Investigation to mean Complainants,
collectively, and Respondents, collectively. The parties may jointly agree to modify this limit.
(f) Each requesting party shall limit its email production requests to a total of five search terms
per custodian per party. The search terms shall be narrowly tailored to particular issues.
Indiscriminate terms, such as the producing company’s name or its product name, are
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.
The parties may jointly agree to modify this limit.
(g) 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.
(h) The mere production of ESI in a litigation as part of a mass production shall not itself
constitute a waiver for any purpose.
SOURCE: Joint Pretrial Procedures and Stipulations, ITC Inv. No. 337-TA-851 (Sept. 25,
2012).
9
ITCTLA, Sample ITC Section 337 Stipulations
OR
(a) Production of Electronically Stored Information (“ESI”) shall include metadata such as the
author, and date and time that the document was created, last saved, or modified, to the extent
such metadata exists and is readily available.
(b) To obtain electronic mail, parties must propound specific e-mail production requests. To the
extent any e-mails are produced, at least the To/From/cc/Subject/Sent Date fields shall be
provided.
(c) The parties reserve the ability to request that additional metadata fields be set forth or
provided for certain specified electronic documents upon review of the other party’s production.
The parties reserve their respective rights to object to any such request.
(d) Each requesting party shall limit its initial e-mail production requests to a total of five (5)
custodians per producing party. Producing party shall be interpreted in this Investigation to mean
[LIST], collectively. After service of the initial e-mail production requests and further discovery,
the parties may jointly agree to modify this limit to the extent a requesting party can demonstrate
a good faith basis for such a request based on discovery taken, and the Court may modify this
limit for good cause.
(e) Each requesting party shall limit its email production requests to a total of fifteen (15) search
terms per custodian per party. The search terms shall be narrowly tailored to particular issues.
Indiscriminate terms, such as the producing company’s name or its product name, are
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.
The parties may jointly agree to modify this limit, and the Court may modify this limit for good
cause.
(f) 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.
(g) The mere production of ESI in a litigation as part of a mass production shall not itself
constitute a waiver for any purpose.
SOURCE: Joint Stipulation Regarding Discovery of Electronically Stored Information, ITC Inv.
No. 337-TA-834 (Aug. 3, 2012)
10
ITCTLA, Sample ITC Section 337 Stipulations
4.
Form of Document Production
(a) All document production shall be in electronic format unless otherwise agreed to in advance
by the Private Parties.
(b) The Private Parties shall each produce imaged copies of responsive and nonprivileged
electronic and paper documents electronically, Bates-stamped, at a resolution of at least 300
dots-per-inch (dpi), and using one of three file formats: (a) multi-page PDF, (b) single page
Group IV .TIF images (for .TIF images a separate load file should be provided to identify the
beginning and ending Bates numbers for each document), or (c) native file format.
(c) The Private Parties shall produce electronic documents in Excel (e.g., .xls) in their native
format upon request within two (2) business days. The Private Parties may also request the
metadata fields be set forth or provided for certain specified electronic documents upon review
of the other party’s production. Such metadata fields shall be restricted to Document Creator,
Date of Creation, Last Date Modified, and if applicable Beginning/End of Document. The
Private Parties reserve their respective rights to object to any such requests. A Private Party is
not obligated to produce metadata from a document (electronic or paper) if metadata does not
exist in the document or if the metadata is not machine-extractable.
(d) Paper documents included in a Private Party’s production shall be scanned to imaged copies
and produced in the same manner specified in Paragraphs __ and __. The imaged copies of
scanned paper documents will be logically unitized (i.e., to preserve page breaks between
documents and otherwise allow separate documents to be identified).
(e) Notwithstanding the provisions of paragraphs ____, a producing party may elect to make
documents containing highly sensitive technical information available for inspection and copying
at the offices of the producing party’s outside counsel. For the purposes of this paragraph, highly
sensitive technical information includes, but is not limited to, computer code, formulas, recipes,
engineering specifications, flow diagrams, or schematics that define or otherwise describe in
detail the algorithms, structure of software, or hardware designs.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
OR
(a) The Private Litigants agree that all documents produced in this action will be exchanged
electronically on discs or other digital storage medium or a secure File Transfer Protocol (“FTP”)
host or other similar secure service. To the extent the documents are ordinarily maintained by the
producing party in a form that is electronically searchable, they must be produced in a form that
is electronically searchable (e.g., PDFs with embedded text enabled). In addition, the following
must be produced for each scanned paper or ESI document (other than documents produced in
native format (excluding PDF files), described separately below):
1. Single-page TIFF images; 300 dpi CCITT Group IV black and white TIFFs should be
provided;
11
ITCTLA, Sample ITC Section 337 Stipulations
2. Image based load files for IPRO (*.LFP), OPTICON (*.OPT or *.LOG), or
SUMMATION (*.dii). These load files shall also depict the document boundaries, and IPRO and
Summation must also depict the attachment (parent/child) relationships;
3. Data load files that are compatible with Concordance (*.DAT) or Summation (*.DII)
or are in a similarly delimited format; (such files produced to counsel for S3G will be in .DAT
format and contain the standard Concordance delimiters). The load files must include the
following fields: “BegProd,” “EndProd,” “Pages,” and “Volume.” The documents should be
logically unitized (i.e., contain correct document breaks: for instance, a five page fax consisting
of a cover page and a four page memo should be unitized as a five-page document) with the
beginning and ending Bates ranges to account for the breaks between documents.;
4. All TIFF images and PDF files will be endorsed with a Bates number, that will also be
used as the filename. The Bates numbers should be unique, always contain the same number of
digits with no spaces, and be zeropadded; and
5. Document level OCR text files with extracted text will be provided. Each file will be
named using the bates number of the first page of the document (e.g., a four page document that
starts with ABC0000001 will bear the name ABC0000001.TXT).
(b) Alternatively, a Private Litigant may produce documents or information in native format
(e.g., in electronic, non-TIFF or non-PDF format) with an associated Bates number and data load
files as described in paragraph IV.A.3. Native format documents will be produced with TIFF
placeholders. Each Private Litigant reserves its rights to assert any appropriate objections to a
request for production of documents in native format.
(c) Atypical or oversized documents and other materials that are not amenable to imaging may
be made available for inspection at the offices of counsel.
(d) The parties may use encryption software, such as TrueCrypt, to protect any documents
produced on electronic media such as DVDs or hard drives
(e) The Private Litigants reserve the ability to request that additional metadata fields be set forth
or provided for certain specified electronic documents upon review of the other party’s
production. The Private Litigants reserve their respective rights to object to any such request.
SOURCE: Procedural Agreement, ITC Inv. No. 337-TA-839 (Nov. 1, 2012).
OR
(a) All production document images and other electronically stored information ("ESI") will be
provided as single-page Tagged Image File Format ("TIFF format" or ".tiff format") files with
document level text files, each file named using the starting Bates number of the document, on
CDs, DVDs, hard drives, or other conventional media, labeled with the beginning and ending
document Bates numbers. All images generated from hard copy documents shall be scanned as
12
ITCTLA, Sample ITC Section 337 Stipulations
black and white images at 300 d.p.i. resolution and shall be saved and produced in a Group 4
compression single-page, TIFF format files which reflect, without visual degradation, the full
and complete information contained on the original document, with document level text files,
each file named using the starting Bates number of the document. All images generated from
native electronic documents shall be saved electronically (or "printed") in a Group 4 compression
single-page TIFF format that reflects the full and complete information contained on the original
document. The parties shall meet and confer to the extent reasonably necessary to facilitate the
import and use of the produced materials with commercially available document management or
litigation support software such as Summation or Concordance.
(b) Each party will provide document page breaks within the "Load File." The following data
fields will be provided in the parties' respective "Load File."
Field
Description
BEGBATES
ENDBATES
CUSTODIAN
PAGE COUNT
OCRTEXT
TO
FROM
CC
BCC
SUBJECT
DATE SENT
TIME SENT
FILE NAME
Beginning document number
Ending document number
Individual from whom the document originated
Total number of pages for the document
Path to multi-page OCR text file
Main recipient(s) of the e-mail message
Sender of the e-mail message
Recipient(s) of "Carbon Copies" of the e-mail message
Recipient(s) of "Blind Carbon Copies" of the e-mail message
Subject field extracted from the native file metadata (for emails)
Date the e-mail message was sent
Time the e-mail message was sent
The title of a loose e-document or email attachment if present.
If not present, this field will be null.
File size in kilobytes (KB)
Link to native file named by BEGBATES
FILE SIZE
NATIVEFILE
(c) Any electronic file that cannot be rendered to TIFF format, or that cannot be legibly rendered
in TIFF format will be produced in native form in a "NATIVEFILE" subfolder. The path to the
folder and each file's associated production number will be provided in the "Load File." The files
will be named using the starting Bates number of the document. Further, the parties may
negotiate to receive specific information in specific formats, e.g., MS Excel, as the Investigation
develops and the need arises.
(d) Pursuant to Ground Rule ____, all documents produced shall be numbered sequentially by a
unique page identifier ("Bates number"). The Bates number shall appear in the lower right hand
corner of the page, or at a location that does not obliterate, conceal, or interfere with any
information from the source document.
(e) Documents and ESI produced digitally, e.g., on a magnetic or optical medium or by network
communication, that is Confidential Business Information (CBI) under the Protective Order in
13
ITCTLA, Sample ITC Section 337 Stipulations
this proceeding is to be designated as such by marking the medium, container, or communication
with the legend in paragraph 2(a) of the Protective Order or a comparable notice. In addition,
with respect to digital image files, such as TIFF format files, the Producing Party shall use its
best efforts to mark each viewable page or image with the same legend or comparable notice.
Any medium, container, or communication having native format CBI files will be marked by the
Producing Party with the legend in paragraph 2(a) of the Protective Order or a comparable notice
indicating which such native files contain CBI. If any Receiving Party prints or otherwise copies
such native CBI files that the Producing Party produced pursuant to the preceding sentence, the
Receiving Party shall mark such printings or copies with the legend or comparable notice on the
copy's medium, container, or communication.
(f) The parties further agree to cooperate on any further mechanics of production.
(g) Neither Respondent nor Complainant are required or are under any obligation to preserve,
search for, collect or produce:
(i) Voicemail (or other forms of voice data) or instant messages;
(ii) Information stored on hand-held devices such as cell phones, Blackberries, etc. unless such
information is not replicated in another accessible location (information stored on tablet PCs,
notebook computers, or laptop computers remain discoverable);
(iii) Multiple identical copies of potentially relevant emails;
(iv) ESI contained on backup systems (e.g., systems that periodically store electronic information
on tape or comparable media to permit recovery of the information in the event of a system
failure); neither Respondent nor Complainant are required or are under any obligation to suspend
the operation or rotation of such backup systems;
(v) Deleted, fragmented, transitory (e.g., cookie files, cache files, temporary files), or slack data
located on hard drives or servers.
(h) The production of ESI to the Commission Investigation Staff shall be tailored to meet the
requirements of the Staff.
(i) Each document's electronic image shall convey the same information as the original
document. If a document's electronic image fails to convey the same information as the original
document, or a document presents other imaging or formatting problems, such documents shall
be promptly identified and the parties shall meet and confer to attempt to resolve the problems.
Where appropriate, the parties may meet and confer and agree to produce documents in "native"
format, or produce documents for inspection, rather than in electronic image form.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
OR
(a) All document production shall be in electronic format unless otherwise agreed to in advance
by the Private Parties.
14
ITCTLA, Sample ITC Section 337 Stipulations
(b) The Private Parties shall each produce imaged copies of responsive and nonprivileged
electronic and paper documents electronically, Bates-stamped, using single-page Tagged Image
(“TIFF”) format. TIFF files shall be single page and shall be named with a unique production
number followed by the appropriate file extension. Load files (for Concordance and Summation)
shall be provided to indicate the location and unitization of the TIFF files. If a document is more
than one page, the unitization of the document and any attachments and/or affixed notes shall be
maintained as they existed in the original document. The parties agree to produce documents in
text-searchable format to the extent reasonably possible. A party that receives a document
produced in a format specified above may make a reasonable request to receive the document in
its native format, and upon receipt of such a request, the producing party, if reasonable, shall
produce the document in its native format.
(c) The Private Parties agree that, to the extent reasonably possible and to the extent it does not
impose undue cost, the following metadata fields will be provided for each file produced:
All document types:






Begdoc# (starting bates no.)
Enddoc# (ending bates no.)
Custodian
Filename (original native file name)
FileExt (original native file extension)
Filepath (data’s original source path)
E-mails only:










To
From
cc
bcc
Date received
Time received
E-mail subject
ParentID (parent’s start bates)
Attchids (start bates of each child)
Attrange (family’s start and end bates)
Any other metadata associated with any files need not be produced and will not be subject to
production absent a showing of good cause by the requesting party based upon specific facts that
demonstrate a particular need for such evidence that justifies the burden of retrieval, and further
subject to the producing party’s claim of undue burden or cost.
(d) Paper documents included in a Private Party’s production shall be scanned to imaged copies
and produced in the same manner specified in Paragraphs __ and __. The imaged copies of
scanned paper documents will be logically unitized (i.e., to preserve page breaks between
documents and otherwise allow separate documents to be identified).
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-857 (Nov. 6, 2012).
15
ITCTLA, Sample ITC Section 337 Stipulations
OR
(a) The private parties agree to cooperate on the mechanics of production, such as file naming
conventions, field delimiters, and the like. The parties agree that all spreadsheets maintained in
native format will be produced in native format. The parties may, by agreement, produce other
type(s) of electronically stored information in native format if production by TIFF images is
likely to be inefficient or lead to significant difficulty in using the information, but the default
will be production as TIFF images. When a document that is produced as TIFF images contains
hidden text (e.g., the speaker’s notes contained in a PowerPoint presentation), the document will
be produced with the hidden text. If additional information is required to properly understand an
imaged produced document, the parties will meet and confer to provide the needed information.
Electronic data should be provided in volumes containing folders in the following format:
• Images – Single-page Group IV TIFF image files named with the corresponding Bates
number.
• Text – For each document, accompanying text will be provided in the Concordance
.DAT file.
• To the extent native files are produced, they will be produced with a placeholder TIFF
image. Each TIFF placeholder will contain the beginning Bates number and the name of
the native file.
• Database Load Files/Cross-Reference Files will be provided with (1) a Concordance
load file and (2) an Opticon load file.
The Concordance load file should be a .DAT file with the following Concordance
delimiters:
a) Quote = ANSI 254 ( þ )
b) Comma = ANSI 020 ( )
c) New line = ANSI 174 ( ® )
The Opticon load file should have a .OPT extension and be in the following format:
a) Must include relative image path on page level.
b) Must include a volume identifier, either (1) top level volume, or (2) folder for
delivery.
c) Must include path to image file beginning with first subfolder in the delivery.
d) Document breaks must be as follows: Y=document.
e) Example of Opticon load File:
ABC00000001,VOLUME,\IMAGES\ABC00000001.TIF,Y,,,
ABC00000002,VOLUME,\IMAGES\ABC00000002.TIF,Y,,,
16
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: Joint Pretrial Procedures and Stipulations, ITC Inv. No. 337-TA-851 (Sept. 25,
2012).
POSSIBLE ADDITION
To the extent that an original document in color has been produced in black and white, the
Receiving Party may request that the document be produced in color if it has a reasonable belief
that a color version will provide needed information not available from the black and white
version. The Producing Party shall produce the color version within three (3) business days.
However, this provision does not preclude the Producing Party from asserting that a particular
request for color versions would be overly burdensome.
17
ITCTLA, Sample ITC Section 337 Stipulations
5.
Inadvertent Disclosure of Privileged Materials
(a) If information subject to a claim of attorney-client privilege, work-product immunity, or other
privilege, doctrine, right, or immunity is nevertheless inadvertently or unintentionally produced,
such production shall in no way prejudice or otherwise constitute a waiver or estoppel as to any
such privilege, doctrine, right, or immunity.
(b) Any party ("Producing Party") disclosing or producing documents, information, or materials
in connection with discovery in this Investigation ("Discovery Material") that inadvertently
produces information that it believes is protected by the attorney-client privilege, work-product
immunity, or other privilege, doctrine, right, or immunity may obtain the return of those
Discovery Materials by promptly notifying the receiving party ("Receiving Party") upon learning
of the inadvertent production. If a Receiving Party receives materials that bear a legend or other
marking indicating that the materials are subject to an attorney-client privilege, work product
protection or other privilege or immunity that would otherwise attach to the document or
information and where it is reasonably apparent that the materials were provided or made
available through inadvertence, the Receiving Party must refrain from examining the materials
any more than is essential to ascertain if the materials are privileged, and shall immediately
notify the Producing Party in writing that he or she possesses material that appears to be
privileged.
(c) Upon receiving notification under paragraph 2(b) above, the Receiving Party shall within five
(5) days gather and return to the Producing Party all copies of the Discovery Material identified
as inadvertently produced, except for any pages containing privileged markings by the Receiving
Party, which may have the privileged marking redacted or, at the Receiving Party's option, be
destroyed and certified as such by the Receiving Party to the Producing Party. In no case will the
return of any document demanded pursuant to paragraph (c) be delayed or refused by reason of a
party’s objection to the demand or by the filing of a motion to compel. Within five (5) days after
receiving the returned Discovery Material, the Producing Party shall provide a privilege log for
those materials.
(d) Nothing in this Stipulation shall prevent the Receiving Party from challenging the propriety
of the attorney-client privilege or work-product immunity or other applicable privilege or
immunity designation (based on information independent of the content of the asserted
privileged materials) by submitting a written challenge to the Administrative Law Judge. Unless
and until the Administrative Law Judge rules in favor of the Receiving Party on such a written
challenge and grants use of the Discovery Material at issue, the Receiving Party shall not use or
refer to the Discovery Material, including in deposition, any hearing, or in any filing.
Notwithstanding this provision, outside litigation counsel of record are not required to delete
information that may reside on their respective firm's electronic back-up systems or a vendor's
systems that are over-written in the normal course of business.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
18
ITCTLA, Sample ITC Section 337 Stipulations
6.
Inadvertent Failure to Designate as Confidential Business Information
(a) A Producing Party's inadvertent failure to designate Discovery Material as "[supplier's name]
CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER"
("Confidential Business Information") pursuant to paragraph ____ of the Protective Order shall
not constitute as a waiver of its rights to subsequently make an appropriate designation, provided
that the Producing Party notifies the Receiving Party of the correct designation within ten (10)
days of learning of its inadvertent failure to so designate.
(b) A Receiving Party's use of such Discovery Material before receiving notice of the inadvertent
failure to designate shall not constitute a violation of the Protective Order. Upon receiving such
notice, the Receiving Party shall treat such Discovery Material according to its designation under
the Protective Order. In the event the Discovery Material has been distributed in a manner
inconsistent with this designation, a Receiving Party will take the steps necessary to conform
distribution to the designation: i.e., returning all copies in its possession, or notes or extracts
thereof, to the persons authorized to possess such documents. In the event distribution has
occurred to a person not under the control of a Receiving Party, a request for return of the
document, and for an undertaking of confidentiality, shall be made in writing. In the event the
request is not promptly agreed to in writing, or in the event there is no response, or in the event
that the Receiving Party deems the making of the request to be a futile act, the Receiving Party
shall promptly notify the Producing Party of the distribution and all pertinent facts concerning it,
including the identity of the person or entity not under the control of the Receiving Party.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
OR
The parties agree that any inadvertent failure to designate information with one of the
designations provided for in the Protective Order shall not be deemed a waiver of, nor prejudice
to, any applicable designation with respect to the confidentiality of such information or
document, provided that the party notifies the receiving party in writing promptly after discovery
of such inadvertent failure to designate. A receiving party shall not be in breach of the Protective
Order for any use of such discovery information before the receiving party received notice of the
inadvertent failure to designate. Once a receiving party has received notice of the inadvertent
failure to designate pursuant to this provision, the receiving party shall treat such discovery
information as the appropriately designated level pursuant to the terms of the Protective Order.
SOURCE: Joint Pretrial Procedures and Stipulations, ITC Inv. No. 337-TA-851 (Sept. 25,
2012).
19
ITCTLA, Sample ITC Section 337 Stipulations
7.
Discovery of Expert Materials
The Private Parties agree that expert discovery shall be governed by Federal Rule of Civil
Procedure 26.
SOURCE: Discovery Stipulation, ITC Inv. No. 337-TA-836 (Aug. 24, 2012).
OR
The parties agree to operate under Federal Rule of Civil Procedure 26(b)(4) with respect to the
discoverability of expert communications, draft reports, and notes, including draft statements by
expert witnesses.
SOURCE: Joint Stipulation Among the Parties, ITC Inv. No. 337-TA-840 (June 20, 2012).
OR
(a) The parties agree to the limitations of FRCP 26 with regard to the discovery of expert
materials.
(b) Furthermore, nothing in this Stipulation is intended to restrict the Private Parties’ ability to
inquire into the basis of any of the opinions expressed by any experts in his or her report,
declaration, or affidavit, including the manner by which such opinions were reached, and
information considered in reaching such opinions.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-857 (Nov. 6, 2012).
OR
To the extent not inconsistent with any Commission Rule or Ground Rule, the discoverability of
expert materials shall be governed by Federal Rule of Civil Procedure 26(b)(4). For purposes of
clarity and consistent with Federal Rule of Civil Procedure 26(b)(4), the Private Parties agree
that they will not seek production of or discovery into the content of drafts of expert reports,
declarations, or affidavits, or notes taken by experts retained to testify in this Investigation, in
any prior investigation, litigation, or proceeding in which the expert has been retained or any
currently pending investigation, litigation, or proceeding involving the Private Parties. The
Private Parties further agree that they will not seek production of or discovery into the content of
documents relating to communications between such experts and counsel, including email
communications, whether generated in connection with this Investigation, a prior litigation, or
any currently pending investigation, litigation, or proceeding, except for documents, information,
and things included in or attached to such communications that are relied upon by the expert in
his or her expert report, declaration, affidavit, or testimony.
20
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: Stipulation and Agreement Regarding Treatment of Expert Materials, Prosecution
Bar, and No Waiver of Privilege, ITC Inv. No. 337-TA-858 (Jan. 4, 2013).
OR
(a) No communications between counsel and any experts retained or engaged by counsel or the
respective parties in connection with this Investigation and/or any prior or currently pending
investigation, litigation, or proceeding involving Respondent and Complainant shall be the
subject of discovery or inquiry at any deposition, hearing, or trial in this Investigation.
(b) No drafts of any reports, declarations, affidavits, statements, or other types of preliminary
work prepared by, or for, any expert retained or engaged by counsel or the respective parties in
connection with this Investigation and/or any prior or currently pending investigation, litigation,
or proceeding involving Respondent and Complainant, or notes taken by such experts, shall be
the subject of discovery or inquiry at any deposition or hearing in this Investigation.
(c) The protections provided under this Paragraph apply to all documents and communications,
regardless of their form, except for:
(i) Communications between a testifying expert and retaining counsel that relate to compensation
for the expert's study or testimony;
(ii) Communications between a testifying expert and retaining counsel that identify facts or data
that the party's attorney provided and that the expert considered in forming his or her opinions;
(iii) Communications between a testifying expert and retaining counsel that identify assumptions
that the party's attorney provided and that the expert relied on in forming his or her opinions;
(iv) Documents or materials directly relied upon or explicitly referenced or cited by the expert in
his or her expert report, declaration, affidavit, or testimony.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
21
ITCTLA, Sample ITC Section 337 Stipulations
8.
Logging of Privileged Documents
(a) The parties shall produce documents on a rolling basis and shall provide privilege logs twenty
(20) days after the first document production and supplemental privilege logs after each
subsequent document production. Any party withholding relevant or otherwise discoverable
documents as protected from discovery under the attorney-client privilege or work product
immunity doctrine shall provide a log, as required under Ground Rule ____, detailing for each
document the following: (1) the date; (2) the author(s)/sender(s); (3) the recipient(s), including
copy recipients; (4) the general subject matter of the document; and (5) the nature of the
privilege or other protection against discovery that is claimed.
(b) The parties agree that it is not necessary to include documents or communications between a
party and counsel entered in this Investigation, which were created after _________, on their
respective privilege logs..
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
OR
The Private Parties are not required to log Privileged Materials dated after [DATE] (cut-off
date). Information concerning documents or things otherwise protected by the attorney-client
privilege, work product immunity, or other privilege or protection (Privileged Materials) that
were created after the cut-off date do not need to be included on any privilege log.
The Private Parties shall exchange privilege logs on [DATE], and [DASTE 2]. For each
additional set of documents produced on or after [DATE 2], the producing party shall provide a
privilege log no later than twenty (20) days before fact discovery cutoff. For any documents
produced after the date that is 20 days before the fact discovery cutoff, the producing party shall
provide a privilege log no later than ten (10) days after the production but in no event later than
the day before the hearing in this Investigation begins.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
OR
The Parties agree that production of a privileged document list will not be required.
22
ITCTLA, Sample ITC Section 337 Stipulations
9.
Source Code
ITCTLA Model Source Code Provision to be inserted in Model Commission APO
[Para. #]. Source Code. A supplier may designate documents, information, or things as
"CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES ONLY INFORMATION," which
shall mean Litigation Material of a supplier or of any non-parties that a supplier is permitted to
produce in this Investigation that constitutes or contains non-public Source Code.
A. "Source Code" shall mean source code and object code (i.e., computer instructions and data
definitions expressed in a form suitable for input to an assembler, compiler, or other translator).
For avoidance of doubt, this includes source files, make files, intermediate output files,
executable files, header files, resource files, library files, module definition files, map files,
object files, linker files, browse info files, and debug files.
B. Materials designated as "CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES ONLY
INFORMATION," shall only be reviewable by SOURCE CODE QUALIFIED PERSONS.
SOURCE CODE QUALIFIED PERSONS include the following: (1) Outside Litigation Counsel
as necessarily incident to the litigation of this Investigation; (2) personnel at document
duplication, coding imaging or scanning service establishments retained by, but not regularly
employed by, Outside Litigation Counsel as necessarily incident to the litigation of this
Investigation; (3) the Commission, the Administrative Law Judge, the Commission Investigative
Staff, Commission personnel and contract personnel who are acting in the capacity of
Commission employees as indicated in paragraph 3 of this Protective Order; (4) court reporters,
stenographers and videographers transcribing or recording testimony at depositions, hearings or
trial in this Investigation; and (5) Qualified Consultants and/or Qualified Experts in this
Investigation (under paragraph 11 of this Protective Order in this Investigation). However,
Qualified Consultants and/or Qualified Experts may only review CONFIDENTIAL SOURCE
CODE—ATTORNEY'S EYES ONLY INFORMATION after being expressly identified to the
supplier as seeking access to CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES
ONLY INFORMATION. If the receiving party wishes an already identified Qualified Consultant
or Qualified Expert to receive CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES
ONLY INFORMATION it must re-comply with the provisions of paragraph 11 of this Protective
Order in this Investigation, including allowing the supplier an opportunity to object to this
Qualified Consultant or Qualified Expert receiving CONFIDENTIAL SOURCE CODE—
ATTORNEY' S EYES ONLY INFORMATION, and identify the proposed Qualified Consultant
or Qualified Expert as seeking access to CONFIDENTIAL SOURCE CODE—ATTORNEY'S
EYES ONLY INFORMATION.
C. Source Code shall be provided with the following additional protections:
(i) Nothing in this Protective Order shall obligate the parties to produce any Source Code, nor act
as an admission that any particular Source Code is discoverable.
(ii) Access to Source Code will be given only to SOURCE CODE QUALIFIED PERSONS.
23
ITCTLA, Sample ITC Section 337 Stipulations
(iii) Access to Source Code shall be provided on at least two "stand-alone" computers (that is,
the computers may not be linked to any network, including a local area network ("LAN"), an
intranet, or the Internet and may not be connected to any printer or storage device other than the
internal hard disk drive of the computer). The stand-alone computers shall be kept in a secure
location at the offices of the supplier's Outside Litigation Counsel, or at such other location as
the supplier and receiving party mutually agree. Each stand-alone secure computer may be
password protected and shall have the Source Code stored on a hard drive contained inside the
computer. The supplier shall produce Source Code in computer searchable format on the standalone computer. Each stand-alone computer shall, at the receiving party's request, include
reasonable analysis tools appropriate for the type of Source Code. The receiving party shall be
responsible for providing the tools or licenses to the tools that it wishes to use to the supplier so
that the supplier may install such tools on the stand-alone computers.
(iv) The receiving party shall make reasonable efforts to restrict its requests for access to the
stand-alone secure computers to normal business hours, which for purposes of this Paragraph
shall be 9:00 a.m. through 6:00 p.m. local time at the reviewing location. Upon reasonable notice
from the receiving party, which shall not be less than three (3) business days in advance, the
supplier shall make reasonable efforts to accommodate the receiving party's request for access to
the computers outside of normal business hours. Such an expanded review period shall not begin
earlier than 8:00 a.m. and shall not end later than 8:00 p.m. local time at the reviewing location.
The parties agree to cooperate in good faith such that maintaining the Source Code at the offices
of the supplier's Outside Litigation Counsel shall not unreasonably hinder the receiving party's
ability to efficiently conduct the prosecution or defense in this Investigation. The parties reserve
their rights to request access to the Source Code at the site of any hearing or trial. Proper
identification of all SOURCE CODE QUALIFIED PERSONS shall be provided prior to any
access to the stand alone secure computers.
(v) All SOURCE CODE QUALIFIED PERSONS who will review Source Code on behalf of a
receiving party shall be identified in writing to the supplier at least seven (7) business days in
advance of the first time that such person reviews such Source Code. Such identification shall be
in addition to any disclosure required under paragraph 18(B) of this Protective Order. The
supplier shall provide these individuals with information explaining how to start, log on to, and
operate the stand-alone computers in order to access the produced Source Code on the standalone secure computers. For subsequent reviews by SOURCE CODE QUALIFIED PERSONS,
the receiving party shall give at least one business day (and at least 24 hours) notice to the
supplier of such review.
(vi) No person other than the supplier may alter, dismantle, disassemble or modify the standalone computers in any way, or attempt to circumvent any security feature of the computers. (vii)
No copies shall be made of Source Code, whether physical, electronic, or otherwise, other than
volatile copies necessarily made in the normal course of accessing the Source Code on the standalone computers, except for: (1) print outs of reasonable portions of the Source Code in
accordance with the provisions of paragraphs 18(C)(ix)-(x) of this Protective Order; and (2) such
other uses to which the parties may agree or that the Administrative Law Judge or the
Commission may order. No outside electronic devices, including but not limited to laptop
computers, USB flash drives, zip drives, or devices with camera functionalities shall be
24
ITCTLA, Sample ITC Section 337 Stipulations
permitted in the same room as the stand-alone computers. The supplier may exercise personal
supervision from outside the review room over the receiving party when the receiving party is in
the Source Code review room. Such supervision, however, shall not entail review of any work
product generated by the receiving party, e.g., monitoring the screens of the stand-alone
computers, monitoring any surface reflecting any notes or work product of the receiving party, or
monitoring the key strokes of the receiving party. There will be no video supervision by any
supplier.
(viii) Nothing may be removed from the stand-alone computers, either by the receiving party or
at the request of the receiving party, except for (1) print outs of reasonable portions of the Source
Code in accordance with the provisions of paragraphs 18(C)(ix)-(x) of this Protective Order; and
(2) such other uses to which the parties may agree or that the Administrative Law Judge or the
Commission may order.
(ix) At the request of the receiving party, the supplier shall within three (3) business days provide
one (1) hard copy print out of the specific lines, pages, or files of the Source Code that the
receiving party believes in good faith are necessary to understand a relevant feature of an
accused product. During the review of Source Code, if a receiving party believes in good faith
that contemporaneous access to print-outs of particular pages of the Source Code are necessary
to further the Source Code review, the receiving party may request and the supplier shall
promptly provide one (1) hard copy print out of such pages. The receiving party shall limit its
requests for contemporaneous access to print outs to those pages actually necessary to conduct
the Source Code review. If the supplier objects in any manner to the production of the requested
source code (e.g., the request is too voluminous), it shall state its objection within the allotted
five (5) business days pursuant to this paragraph. In the event of a dispute, the parties will meet
and confer within five (5) business days of the objection being raised and if they cannot resolve
it the parties will raise it with the ALJ.
(x) Hard copy print outs of Source Code shall be provided on bates numbered and watermarked
or colored paper clearly labeled CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES
ONLY INFORMATION on each page and shall be maintained by the receiving party's Outside
Litigation Counsel or SOURCE CODE QUALIFIED PERSONS in a secured locked area. The
receiving party may also temporarily keep the print outs at: (a) the Commission for any
proceedings(s) relating to the Source Code, for the dates associated with the proceeding(s); (b)
the sites where any deposition(s) relating to the Source Code are taken, for the dates associated
with the deposition(s); and (c) any intermediate location reasonably necessary to transport the
print outs (e.g., a hotel prior to a Commission proceeding or deposition). The receiving party
shall exercise due care in maintaining the security of the print outs at these temporary locations.
No further hard copies of such Source Code shall be made and the Source Code shall not be
transferred into any electronic format or onto any electronic media except that:
1. The receiving party is permitted to make up to five (5) additional hard copies for use at
a deposition.
2. The receiving party is permitted to make up to five (5) additional hard copies for the
Commission in connection with a Commission filing, hearing, or trial, and of only the
specific pages directly relevant to and necessary for deciding the issue for which the
25
ITCTLA, Sample ITC Section 337 Stipulations
portions of the Source Code are being filed or offered. To the extent portions of Source
Code are quoted in a Commission filing, either (1) the entire document will be stamped
and treated as CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES ONLY
INFORMATION; or (2) those pages containing quoted Source Code will be separately
stamped and treated as CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES
ONLY INFORMATION.
3. Electronic copies of Source Code may only be made to be included in documents
which, pursuant to the Commission's rules, procedures and order(s), cannot be filed or
served in hard copy form and must be filed or served electronically. Only the necessary
amount of electronic copies to effectuate such filing or service may be stored on any
receiving party server, hard drive, thumb drive, or other electronic storage device at any
given time. After any such electronic filing or service, the receiving party shall delete all
electronic copies from all receiving party electronic storage devices.
4. The receiving party is permitted to make up to six (6) identical CD-ROMs or DVDs
that contain an electronic copy of the hard copy print-outs of Source Code provided by
the supplier. The receiving party may provide these CD-ROMs or DVDs to Qualified
Consultants or Qualified Experts, who may use such CD-ROMs solely for active review
of the Source Code. The receiving party is also permitted to make temporary copies
necessarily made in the production of these CD-ROMs or DVDs, provided any such
copies are immediately deleted once the temporary copies are no longer required for the
production of the CD-ROMs or DVDs.
5. The supplier shall, on request, make a searchable electronic copy of the Source Code
available on a stand-alone computer during depositions of witnesses who would
otherwise be permitted access to such Source Code. The receiving party shall make such
request at the time of the notice for deposition.
(xi) Nothing in this Protective Order shall be construed to limit how a supplier may maintain
material designated as CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES ONLY
INFORMATION.
(xii) Outside Litigation Counsel for the receiving party with custody of CONFIDENTIAL
SOURCE CODE—ATTORNEY'S EYES ONLY INFORMATION shall maintain a source code
log containing the following information: (1) the identify of each person granted access to the
CONFIDENTIAL SOURCE CODE—ATTORNEY'S EYES ONLY INFORMATION; and (2)
the first date on which such access was granted. Outside Litigation Counsel for the receiving
party will produce, upon request, each such source code log to the supplier within twenty (20)
days of the final determination of the Investigation.
[Para. #]. No prejudice. The private parties agree that entering into this Protective Order
Addendum is without prejudice to any party's rights to propose, request or otherwise move for
different provisions relating to Source Code production in the Investigation or any other
investigation, action or proceeding.
26
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: ITCTLA Proposed Model APO Provision. For alternate approaches, see, e.g.,
Granting in Part Joint Motion to Amend Protective Order to Add Enhanced Confidentiality
Provisions and Cross-Use of Documents, Order 25, ITC Inv. No. 337-TA-794, (Feb. 1, 2012);
Stipulation Between the Private Parties and Proposed Order to Amend the Protective Order to
Add Provisions Regarding Source Code Production, ITC Inv. No. 337-TA-812 (Jan. 19, 2012);
and Joint Stipulation on the Production of Source Code, ITC Inv. No. 337-TA-834 (May 30,
2012).
27
ITCTLA, Sample ITC Section 337 Stipulations
10.
Discovery Committee
Pursuant to Ground Rule ____, for each month of the discovery period, Complainants’ counsel
shall prepare and circulate to counsel for all parties a draft Discovery Committee Report no
fewer than two (2) business days prior to the deadline for filing the Discovery Committee
Report. Counsel for the parties shall meet and confer in good faith regarding any disputes about
the content of the draft Discovery Committee Report, and Complainants’ counsel shall be
responsible for timely filing the final Discovery Committee Report.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-857 (Nov. 6, 2012).
OR
(a) Pursuant to Ground Rule _________, counsel with authority to negotiate procedural matters
will discuss outstanding matters on a bi-weekly schedule at 11:00 AM Eastern Standard Time
every other Wednesday, or such other date and time that is mutually agreed upon. For ease of
preparation, the parties will circulate agenda items by noon the previous day (Tuesday).
(b) Only those attorneys who have subscribed to Order No. 1 ("Protective Order") may
participate in the Discovery Committee meetings.
(c) Complainant will draft the Discovery Committee report for the first Discovery Committee
meeting. Thereafter, Respondent and Complainant shall alternate drafting the Discovery
Committee report. The drafting party shall draft and circulate the report within four calendar
days after the end of each calendar month; reviewing party shall provide comments within seven
calendar days after the end of each calendar month; and, pursuant to Ground Rule ______, the
finalized report shall be signed by lead counsel within ten days after the end of each calendar
month for submission to the Administrative Law Judge.
SOURCE: Joint Stipulation of the Private Parties Regarding Discovery, ITC Inv. No. 337-TA838 (June 5, 2012).
28
ITCTLA, Sample ITC Section 337 Stipulations
11.
Third-party discovery materials
The Private Parties shall serve upon each other all materials received pursuant to any third-party
subpoena within three (3) business days of receipt from the third-party. Such service may be
made by email, in accordance with Paragraph ___ above, or in accordance with Paragraphs
_____ above.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
OR
Production of Third-Party Documents
Subject to the provisions of the Protective Order for this Investigation, the Private Parties will
serve each other with copies of any documents produced by third parties pursuant to subpoena
within five (5) business days of receipt. The Private Parties reserve their rights to modify this
provision and/or seek specific accommodations as may become necessary to ensure the receipt of
documents procured by subpoena sufficiently in advance of any relevant depositions.
SOURCE: Discovery Stipulation, ITC Inv. No. 337-TA-836 (Aug. 24, 2012).
29
ITCTLA, Sample ITC Section 337 Stipulations
12.
Reliance on other parties’ discovery requests
Any Party may rely upon and/or enforce any discovery propounded by any other Party (including
discovery propounded by a Party that has since been terminated from this Investigation) and the
responses thereto if the responses to the other Party’s discovery have been incorporated by
reference in the moving Party’s discovery responses or if the responses are in response to
requests jointly served by the Respondents. Another Party may only seek to enforce an original
propounding Party’s discovery request that has been incorporated or jointly issued consistent
with any qualifications or limitations already agreed upon in writing between the original
propounding Party and the responding Party. If the original propounding Party agreed in writing
to revise a particular request, another Party may seek to enforce the original request only as so
revised. This agreement does not prevent a Party from objecting to the admissibility of a
response to a discovery request originally propounded by a Party other than the Party seeking its
admission on any other basis, such as relevance or unfair prejudice.
Discovery requests that are jointly issued by all of the Respondents shall be subject to Ground
Rule ____; thus the number of requests in the jointly-issued requests shall count against the total
number permitted for each Respondent. Any discovery requests that a Party serves on its own
behalf only shall also be subject to Ground Rule ____. A Party’s individual requests and any
jointly-issued requests shall be counted toward the limit imposed by Ground Rule _____.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
OR
Any party, and the Staff, may enforce any discovery propounded by any other party. However,
the first party’s discovery can only be enforced by a second party consistently with any
qualifications or limitations already agreed upon by the first party. For example, if the first party
had agreed to narrow a facially broad request, other parties can enforce the request only as so
narrowed.
30
ITCTLA, Sample ITC Section 337 Stipulations
13.
Use of joint and/or other parties’ experts
Respondents in this Investigation agree that ___________ will act as an expert on behalf of each
of them. If one or more of the respondents settles with Complainant or otherwise withdraws
from the Investigation or decides not to contest one or more of the issues for which __________
is retained as an expert, those respondents agree that ________ may continue to act as an expert
for the remaining respondent(s).
31
ITCTLA, Sample ITC Section 337 Stipulations
14.
Cross-Use of materials from/in other litigation
Complainant and Respondent hereby stipulate and agree as follows:
(a) Complainant and Respondent wish to avoid the unnecessary cost and effort of producing in
this Investigation documents and information that have already been produced in
__________________________________ (the “OTHER [SHORT NAME TO BE SUPPLIED]
case”).
(b) Complainant accordingly agrees that Respondent can use any document or information that
Complainant produced to Respondent in the OTHER case in this Investigation as if it had been
produced in this Investigation, subject to the limitations in paragraph 4. Respondent accordingly
agrees that Complainant can use any document or information that Respondent produced to
Complainant in the OTHER case in this Investigation as if it had been produced in this
Investigation, subject to the limitations in paragraph 4.
(c) Complainant and Respondent will make reasonable efforts in this Investigation to avoid
seeking documents and information already produced in the OTHER case. This agreement shall
be without reservation of either party’s right to serve additional requests to discovery served in
the OTHER case or to seek production of information and documents in response to discovery
served in the OTHER case should the requesting party believe that the producing party’s
production or responses are deficient or incomplete.
(d) In the event that discovery is propounded in this Investigation that is duplicative of discovery
already propounded in the OTHER case, and the producing party elects to object to such
discovery on that basis, the producing party shall identify in its response to the request in this
Investigation the discovery request(s) from the OTHER case that make the request in this
Investigation duplicative, and at least incorporate by reference the response(s) to said requests in
addition to any further response as applicable.
(e) Complainant and Respondent also wish to avoid the unnecessary cost and effort of producing
in the OTHER case documents and information that have already been produced in this
Investigation.
(f) Complainant accordingly agrees that Respondent can use any document or information that
Complainant produces to Respondent in this Investigation in the OTHER case as if it had been
produced in the OTHER case, subject to the limitations in paragraph 8. Respondent accordingly
agrees that Complainant can use any document or information that Respondent produces to
Complainant in this Investigation in the OTHER case as if it had been produced in the OTHER
case, subject to the limitations in paragraph 8.
(g) Complainant and Respondent will make reasonable efforts in the OTHER case to avoid
seeking documents and information already produced in this Investigation. This agreement shall
be without reservation of either party’s right to serve additional requests to discovery served in
this Investigation or to seek production of information and documents in response to discovery
32
ITCTLA, Sample ITC Section 337 Stipulations
served in this Investigation should the requesting party believe that the producing party’s
production or responses are deficient or incomplete.
(h) In the event that discovery is propounded in the OTHER case that is duplicative of discovery
already propounded in this Investigation, and the producing party elects to object to such
discovery on that basis, the producing party shall identify in its response to the request in the
OTHER case the discovery request(s) from this Investigation that make the request in the
OTHER case duplicative, and at least incorporate by reference the response(s) to said requests in
addition to any further response as applicable.
SOURCE: Stipulation Between Avago and Iptronics Regarding Use of Information from Related
Case, ITC Inv. No. 337-TA-860 (Jan. 2, 2013).
OR
(a) For purposes of efficiency, the parties consent to the use for and in this investigation the
documents, information, and other materials (“Previously Exchanged Materials”) that they
generated or produced in [PRIOR INVESTIGATION AND/OR LITIGATION] insofar as those
Previously Exchanged Materials are relevant to this Investigation and produced directly or by
reference in this Investigation pursuant to Paragraph __, below. This stipulation does not waive
either party's right to object to the relevance, admissibility, or use for any purpose of any
Previously Exchanged Materials.
(b) In responding to discovery requests, the parties may incorporate by reference any Previously
Exchanged Materials in any related or parallel litigation provided that those materials are reproduced in this Investigation. Such Previously Exchange Materials need not be re-Bates labeled
or contain the confidentiality designation of “Contains Confidential Business Information
Subject to Protective Order,” as required by the Protective Order in this Investigation.
The parties agree that Previously Exchanged Materials used in this Investigation shall be
governed by the Protective Order in this Investigation. Any Previously Exchanged Materials
bearing a confidentiality designation pursuant to the protective order in Certain
______________, Inv. No. 337-TA-____, provided they maintain that status, will be treated as
“confidential business information” pursuant to the Protective Order in this Investigation. The
parties consent to any disclosure of such Previously Exchanged Materials that is permitted by the
protective order in the [PRIOR INVESTIGATION AND/OR LITIGATION].
SOURCE: Joint Pretrial Procedures and Stipulations, ITC Inv. No. 337-TA-851(Sept. 25, 2012).
OR
Documents produced by the parties in either Investigation No. 337-TA-____ or Investigation No.
337-TA-____ shall be deemed produced in both investigations. Such “documents” include, but
are not limited to, documents and things produced in response to requests for production,
discovery requests and responses, expert reports, and deposition and hearing transcripts. This
33
ITCTLA, Sample ITC Section 337 Stipulations
excludes confidential documents and information produced by non-parties, including deposition
transcripts of witnesses not currently employed by the parties.
While these materials will be deemed produced in both investigations, the parties reserve all
objections to the authenticity, admissibility, and relevance of the materials to a particular
investigation. Specifically, the fact that an exhibit was admitted in one investigation does not
necessarily mean that it is relevant to or admissible in the other investigation. Further, the parties
have agreed that while deposition transcripts taken in one investigation will be deemed produced
in both investigations, this will not serve as a basis to object to the deposition of the witness in
the other investigation.
34
ITCTLA, Sample ITC Section 337 Stipulations
15.
Representative Accused Products
(a) For purposes of assessing infringement of the asserted claims of the '___ Patent (whether
direct or indirect), the versions of the source code identified below are representative of the
source code used in all other Accused Devices disclosed in Respondent’s Responses to
Complainant’s Interrogatory No. ____ as using that version of source code:
[TABLE]
Notwithstanding the foregoing, the parties agree that the above products are not representative of
the following products with respect to the accused functionalities of the '____ patent: [TABLE]
(b) Solely for purposes of this Investigation, the asserted claims of the '___ and '___ patents, the
parties agree that Respondents’ products using __________ operate in the same way with respect
to the infringement assertions for '___ patent or the '___ patent as Respondents’ products using
_____________.
(c) Solely for purposes of this Investigation, Respondent agrees that Complainant may use and
rely on the public versions of PRODUCT as representative of the OTHER PRODUCTS as the
basis for its assertions of infringement of the '___ and '___ patents against such products, and
further agrees that Respondent will not object to such use or reliance.
(d) Complainant understands that Respondent represents that it does not know and therefore
cannot confirm what source code was used to compile the executables on the ___________, and
that this agreement is solely for the convenience of the parties in this Investigation. The parties
further agree that this agreement is solely for the parties in this Investigation and that
Complainant shall not cite this stipulation in any other matter.
SOURCE: Based in part on Joint Stipulation Regarding Representative Accused Devices, ITC
Inv. No. 337-TA-796 (May 2, 2012).
35
ITCTLA, Sample ITC Section 337 Stipulations
16.
Importation
(a) This stipulation and the information it contains will be used only in this Investigation, and
shall not be binding on any of the parties for any other purpose or in any other administrative or
judicial proceeding, including Civil Action No. _______________ pending in the
____________, and shall not be used for any other purpose, including as evidence, in any other
such proceeding.
(b) Nothing in this stipulation regarding importation shall be construed as an admission that any
of the Respondents infringe any claim of the patents at issue in this Investigation, or that any of
the Respondents has violated 19 U.S.C. § 1337.
(c) Nothing in this stipulation shall be construed as an admission of validity or enforceability
of the patents at issue in this Investigation.
(d) Respondent will not dispute that it has manufactured in __________ and has sold for
importation into the United States at least one unit of the following products after the issuance of
the patents-in-suit: [LIST]
(e) Respondent will not dispute that at least one unit of the following has been imported into the
United States, within the meaning of 19 U.S.C. § 1337(a)(1)(B), after the issuance of the patents
in-suit: [LIST].
(f) Respondent will not dispute that at least one unit of the following has been sold in the United
States after importation into the United States after the issuance of the patents-in-suit: [LIST]
(g) The parties understand that the Office of Unfair Import Investigations does not oppose the
foregoing Stipulation.
SOURCE: Joint Stipulation Regarding Importation, ITC Inv. No. 337-TA-816 (Dec. 10, 2102).
OR
(a) This stipulation is to be used only in the instant investigation, In the Matter of
_______________, Inv. No. 337-TA-___ (the “Investigation”) and shall not be binding on any
party in any other administrative or judicial proceeding, nor does any party waive the right to
object to the admissibility of this stipulation in any other proceeding.
(b) The Parties agree that this stipulation shall be used solely in connection with establishing
importation of certain of Respondent’s Products into the United States. The Parties agree that
this stipulation does not constitute, and shall not be offered or construed as any admission by
Respondent that it violates Section 337.
(c) Within the meaning of 19 U.S.C. § 1337(a)(1)(B), at least one of each of the following
devices was imported into the United States by Respondent: [LIST].
36
ITCTLA, Sample ITC Section 337 Stipulations
(d) Within the meaning of 19 U.S.C. § 1337(a)(1)(B), at least one of each of the following
devices was sold or will be sold by Respondent within the United States after importation into
the United States before the evidentiary hearing in this Investigation: [LIST].
(e) The Parties to this stipulation will not dispute that the importation requirement of Section 337
is satisfied as to Respondent for the above-identified Respondent Products.
(f) This stipulation shall in no way be construed as limiting the scope of discovery to the
Respondent Products identified above.
(g) On the last day of expert discovery, the Parties shall supplement this stipulation to update the
information set forth in paragraphs 3-4 as to Respondent Products imported or sold for
importation into the United States after the execution date of this stipulation.
(h) In exchange for Respondent‘s agreement to these stipulations, Complainant withdraws its
First Set of Requests for Admission (Nos. ______) served on Respondent.
SOURCE: Stipulation Regarding Importation, ITC Inv. No. 337-TA-827 (Apr. 13, 2012).
37
ITCTLA, Sample ITC Section 337 Stipulations
17.
Confirmation of CBI
If a Private Party (requesting party) sends a request to another Private Party (designating party)
seeking confirmation that a document (including but not limited to documents produced in
discovery, documents submitted to the ALJ, and/or documents filed with the Secretary, in
original or redacted form) does not contain confidential information pertaining to the designating
Private Party, the designating Private Party will respond to the request within three (3) business
days, or such other amount of time as may be agreed upon by the requesting and designating
party, by either: (i) confirming that the document does not have the designating party’s
confidential information; or (ii) identifying the portion(s) of the document the designating party
asserts to contain its confidential information.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
38
ITCTLA, Sample ITC Section 337 Stipulations
18.
Discovery of Communications with Support Staff
There shall be no discovery sought or information offered into evidence relating to
communications with translators, document imaging personnel, trial consultants, graphics
personnel, or other like litigation support personnel working under the direction of counsel. This
provision does not supersede obligations under any orders of the ALJ or the Commission, or
obligations under Ground Rule 4.8 to produce copies of any pre-existing English language
translations of discoverable documents.
SOURCE: Stipulation Amongst the Private Parties, ITC Inv. No. 337-TA-855 (Nov. 28, 2012).
39
ITCTLA, Sample ITC Section 337 Stipulations
19.
Document Use/Authentication
Complainant and Respondents, by counsel, hereby stipulate that the following documents are
authentic and ___ does not object to ____ moving them into evidence without a witness.
OR
Pursuant to Ground Rule ____, Complainant and Respondent (collectively, “the Parties”), and
third party __________ respectfully submit this Joint Stipulation Regarding Certain [THIRD
PARTY] documents. This stipulation is to be used in the instant Investigation only and shall not
be binding on any party in any other administrative or judicial capacity, nor does any party waive
the right to object to the admissibility of this stipulation in any other proceeding. The
Commission Investigative Staff does not oppose this stipulation.
[THIRD PARTY] stipulates as follows:
(a) The documents produced by [THIRD PARTY] in this investigation bearing bates numbers
[LIST] are authentic business documents of [THIRD PARTY]. These documents will be referred
to herein as “[THIRD PARTY] Documents.”
(b) The records produced by [THIRD PARTY] in this investigation bearing bates numbers
[LIST] are authentic business records of [THIRD PARTY]. These documents will be referred to
herein as “[THIRD PARTY] Records.”
(c) The [THIRD PARTY] Records meet the requirements of FRE 806(3): Records of a Regularly
Conducted Activity which generally requires: a) the record was made at or near the time by — or
from information transmitted by — someone with knowledge; b) the record was kept in the
course of a regularly conducted activity of a business, organization, occupation, or calling; c)
making the record was a regular practice of that activity; and d) neither the source of information
nor the method or circumstances of preparation indicate a lack of trustworthiness.
And the parties stipulate as follows:
(a) Whereas [THIRD PARTY] has stipulated to the authenticity of the [THIRD PARTY]
Documents.
(b) Whereas [THIRD PARTY] Cirrus Logic has stipulated that the [THIRD PARTY] Records
meet the requirements of FRE 806(3): Records of a Regularly Conducted Activity.
(c) The Parties will not dispute that the [THIRD PARTY] Records and that the [THIRD
PARTY] Documents are authentic documents produced from the files of [THIRD PARTY].
(d) The Parties will not dispute that the [THIRD PARTY] Records meet the requirements of FRE
806(3): Records of a Regularly Conducted Activity.
40
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: Joint Stipulation Regarding Certain Cirrus Logic Documents, ITC Inv. No. 337-TA813 (June 27, 2012).
OR
(a) This Stipulation and the information it contains shall be used only in the instant investigation,
shall not be binding on any party for any other purposes or in any other administrative or judicial
proceeding, and shall not be used for any other purposes, including as evidence, in any such
other proceeding.
(b) Nothing in this Stipulation shall be construed as an admission that any of Respondents’
products infringe any claim or satisfy any element of any claim of the patents at issue in this
investigation. Nothing in this Stipulation shall be construed as an admission of validity or
enforceability of any claim of any of the patents at issue in this investigation.
(c) For purposes of this investigation only, each document produced by any party or nonparty to
this investigation pursuant to discovery request or subpoena is a true and authentic copy of what
it purports to be.
(d) For purposes of this investigation only, each document or thing, including source code, made
available for inspection by any party or nonparty pursuant to discovery request or subpoena is a
true and authentic copy of what it purports to be.
(e) For purposes of this investigation only, each document produced by any party or nonparty to
this investigation pursuant to discovery request or subpoena, was created no later than on the
date reflected on the document, to the extent a date is reflected on the face of the document, or if
the document is part of a larger printed reference, on the date reflected on the face of the larger
printed reference.
(f) For purposes of this investigation only, each publication produced by any party or nonparty to
this investigation pursuant to discovery request or subpoena, was publicly accessible to persons
interested and ordinarily skilled in the art as of the date of publication, to the extent reflected on
the face of the publication, or if the publication is part of a larger printed reference, on the date
reflected on the face of the larger printed reference.
(g) For purposes of this investigation only, each patent or patent application document produced
by any party or nonparty to this investigation pursuant to discovery request or subpoena, was
filed and/or issued as of the date reflected by the document.
(h) The parties do not presently know of good cause to dispute the above issues for the
documents already produced in this investigation but retain the right to challenge any of the
above issues or conclusions. The party propounding the exhibit shall retain the right to show
additional facts, and may conduct discovery after the close of discovery to address any new
challenge. The parties agree to cooperate with and not object to any such discovery based the
Investigation schedule.
41
ITCTLA, Sample ITC Section 337 Stipulations
SOURCE: Stipulation Regarding Certain Produced Documents and Things, ITC Inv. No. 337TA-834 (Oct. 31, 2012).
OR
(a) This Stipulation and the information it contains shall be used only in the instant investigation,
shall not be binding on any party for any other purposes or in any other administrative or judicial
proceeding, and shall not be used for any other purposes, including as evidence, in any such
other proceeding.
(b) For purposes of this investigation only, the private parties stipulate and agree that the
following witnesses are either unavailable or reside outside the United States within the meaning
of Commission Rule § 210.28(h) and, thus, that their testimony may be admitted by deposition
designation: [LIST]
(c) For purposes of this investigation only, the private parties stipulate and agree that
______________ is unavailable pursuant to Commission Rule § 210.28(h) and, thus, that the
Affidavit of _______________, submitted in this investigation on ______________ under
penalty of perjury, and submitted as trial exhibit ____________, may be admitted into evidence.
(d) For purposes of this investigation only, the private parties stipulate and agree that
______________ is unavailable pursuant to Commission Rule§ 210.28(h) and, thus, that the
Declaration of ______________ of Non-Party ______________, submitted in this investigation
on _____________ under penalty of perjury, and submitted as trial exhibit ___________, may be
admitted into evidence.
SOURCE: Joint Stipulation and [Proposed] Order Regarding Admission of Deposition
Designations and Declarations, ITC Inv. No. 337-TA-797 (August 8, 2012).
OR
(a) This Stipulation and the information it contains shall be used only in the instant Investigation,
shall not be binding on any party for any other purposes or in any other administrative or judicial
proceeding, and shall not be used for any other purposes, including as evidence, in any such
other proceeding.
(b) Nothing in this Stipulation shall be construed as an admission that any patent, patent
application, publication, source code, product, system or other document anticipates, renders
obvious or otherwise invalidates any claim of any of the patents at issue in this Investigation.
Nothing in this Stipulation shall be construed as an admission that any claim of any or the
patents at issue in this Investigation is invalid or unenforceable.
(c) The document produced by Respondent bearing Bates range _______________ is a true and
correct copy of U.S. Patent Publication No. ____________. This document qualifies as a
"printed publication" no later than __________ for purposes of 35 U.S.C. §102.
42
ITCTLA, Sample ITC Section 337 Stipulations
(d) The document produced by Respondent bearing Bates range _______________ is a true and
correct copy of [CITE ARTICLE]. This document qualifies as a '·printed publication" no later
than __________for purposes of 35 U.S.C. § 102.
(e) The documents produced by Complainant bearing Bates range _______________________
are a true and correct copy of ____________. This ___________ represents functionality that
was known, sold, offered for sale and/or used in public prior to _____________ under 35 U.S.C.
§ 102.
(f) The document produced by Respondent as Exhibit __ of the _______ Deposition of
_____________ is a true and correct copy of the website _____________ available at
http://www.____________. This documentation includes a video that was publicly accessible no
later than ____________ for purposes of 35 U.S.C. § 102.
(g) For purposes of this Investigation, Complainant and Respondent stipulate that they will not
challenge the authenticity of documents produced in this Investigation by the following: [LIST
THIRD PARTIES]. Complainant and Respondent reserve all rights to object to the admissibility
of any such documents on any ground other than authenticity.
SOURCE: Prior Art Stipulation, ITC Inv. No. 337-TA-797 (August 4, 2012).
43
ITCTLA, Sample ITC Section 337 Stipulations
20.
Hearing Logistics
In an effort to streamline the upcoming hearing, Complainant and Respondent (collectively, the
“Parties”) hereby stipulate, subject to the ALJ’s approval, that:
1. The Parties will exchange the order of the witnesses each party intends to call by 2 pm
the day before the witnesses are to appear live for testimony;
2. The Parties agree that in the interest of streamlining the hearing, each witness is
called only once to testify and the Party conducting the cross examination may proceed with that
witness’s direct examination, to the extent the witness was previously identified on the party’s
witness list for its own case-in-chief, after the cross examination;
3. The Parties agree that native files can be used to examine witnesses at the hearing,
subject to the terms of the protective order;
4. The Parties agree to split the cost of Real-Time at the hearing 50/50;
5. The Parties agree to the following time allocation at the hearing:
a. The total time for the hearing is split 50/50 between Complainant and Respondent and
any time used by Staff for examinations is taken equally from Complainant and Respondent;
b. Time during examinations is charged to the examining party (for direct, starting from
when the witness is sworn; for cross, starting from when the witness is tendered for cross),
except that time interruptions such as clearing the courtroom that last longer than 1 minute are
split 50/50 between Complainant and Respondent;
c. When an objection is made while a witness is on the stand and the objection takes more
than 1 minute to resolve, the entire time consumed by the objection (including the staff's and
ALJ’s speaking time relating to the objection) is charged to the party that loses the objection;
d. Miscellaneous other time, including discussions with judge, admission of deposition
designations and exhibits and objections thereto, housekeeping, etc., is split 50/50 between the
Parties; and
e. Each Party will designate a timekeeper, who confers with the other Party’s timekeeper,
and agrees at the end of each hearing day on the time spent per side, which is reported to the ALJ
daily on the record.
SOURCE: Joint Stipulation Regarding Hearing Logistics, ITC Inv. No. 337-TA-698 (enf) (Feb.
28, 2012).
44
ITCTLA, Sample ITC Section 337 Stipulations
21.
Miscellaneous
Trial Equipment
The Private Litigants agree to meet and confer to identify audio/video equipment for their shared
use at trial. To the extent such equipment is identified and procured, the Private Litigants agree
to share equally the costs of said audio/visual equipment.
SOURCE: Procedural Agreement, ITC Inv. No. 337-TA-839 (Nov. 1, 2012).
Translations
Except as provided for by Ground Rules 4.8 (translations), 9.4.1.4 (foreign language witness
statement) and 9.7 (foreign language hearing exhibits), the Private Parties shall have no
obligation to create translations of foreign language documents for purposes of this Investigation.
The Private Parties agree to produce any translations on which an expert relies, but will treat any
other translations (aside from those required under Ground Rules 4.8, 9.4.1.4., and 9.7) generated
after the institution of this Investigation as work product, which will not be produced in
discovery. This section does not apply to any interrogatory responses for which the responding
party relies on Commission Rule 210.29(c); if, in reliance on Commission Rule 210.29(c), a
party responds to an interrogatory by identifying foreign-language documents, the responding
party will provide English-language translations of those documents at the same time as it
provides the foreign-language documents so identified.
SOURCE: Discovery Stipulation, ITC Inv. No. 337-TA-836 (Aug. 24, 2012).
Objections to Witness Statements, Deposition Designations, and Requests for Receipt of
Evidence Without a Sponsoring Witness
Complainant and Respondents collectively the “private parties,” by and through their respective
counsel, submit the following stipulations, subject to the ALJ’s approval.
1. Objections to Deposition Designations and Counter-Designations
Except as set forth in paragraph 4 below, the private parties stipulate that their objections to
deposition designations and counter-designations are all deemed overruled, and the designations
and counter-designations shall be received in evidence and given whatever weight the ALJ
deems appropriate.
2. Objections to Exhibits and Witness Statements
45
ITCTLA, Sample ITC Section 337 Stipulations
Except as set forth in paragraph 4 below, the private parties stipulate that their objections to
exhibits are all deemed overruled, and the exhibits shall be received in evidence and given
whatever weight the ALJ deems appropriate.
3. Objections to Requests to Receive Evidence Without a Sponsoring Witness
Except as set forth in paragraph 4 below, the private parties agree that all objections to requests
to receive evidence without a sponsoring witness are deemed overruled.
4. Exceptions
This stipulation does not apply to objections that are included in a party’s motions in limine or
high-priority objections, or to subject matter that is implicated in other pending motions (such as
in _____’s motion to compel non-privileged documents, ______’s motion to strike the
supplemental expert report of _____________, and ___________’s Motion to Strike
_________’s Errata Sheet). For the avoidance of doubt, the parties note that this stipulation does
not indicate that any exhibit should properly be given any evidentiary weight (for example, the
private parties have requested various pleadings and discovery responses in this Investigation to
be received without a sponsoring witness; this stipulation that such documents should be
received without a sponsoring witness does not affect the evidentiary weight such documents
should be given under the Code of Federal Regulations, the Ground Rules, or other authorities;
for another example, hearsay evidence may be entitled to little or no weight). The parties to this
stipulation reserve the right to argue and appeal against any particular piece of evidence being
afforded undue weight.
SOURCE: Stipulations Concerning Objections to Witness Statements, Deposition Designations,
and Requests for Receipt of Evidence Without a Sponsoring Witness, ITC Inv. No. 337-TA-795
(July 16, 2012).
46
ITCTLA, Sample ITC Section 337 Stipulations