Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 1 of 43
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`FIN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`AUSTIN DIVISION
`CARBYNE BIOMETRICS, LLC,
`Plaintiff, Civil Action No. 1:23-cv-00324
`VS.
`APPLE INC., JURY TRIAL
`Defendant.
`
`[PROPOSED] JOINT PRETRIAL ORDER
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`Il.
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`I.
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`IV.
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`VI.
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`VIL.
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`VILL.
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`IX.
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 2 of 43
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`TABLE OF CONTENTS
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`Appearance Of Counsel ..........cccccecssscessseeesseeceeseecseseeeseeeeeseeecesaeeesseecesseeecseeessseeeeseeessseeensas 1
`Statement Of JULISGICTION. 0.0.0... eceeceeeeceteeseeeseceseeseeeseceeeeseceseccesseceseceeeseceseseeeeaeeeaeseeeeaeenseaes 3
`Statement of the Case.......ecceeccescesscecsseceseeseeeeseeceaeceseeceaeceeeceaeceeeseaeeeeeseaeceeesseeseeeseaeeees 3
`Parties’? Contentions ..........eecceseesesseceseeeseesecesecesecseceseceseceeesecesecseeeseceaeseeeaeceseceeeaeeeaeseneeaees 4
`A. Carbyne’s Statement of Contentions ..........cccccccesscceeseceeeneeeeseeeeeseeeeeseeeesseeeeseeeesaees 4
`B. Apple’s Statement of Contentions ...........cceecceesceeseeeeseeeeseeeseceseeeeseeeseeeeseeneeenseenseees 7
`Stipulated Facts... eccscccsssccesseeceeseeeesneeesseeesseeeesseeeeseeeeeseeesseeesseeeeeaeeesseeesseeeessseeeseaeeens 9
`Stipulations and Trial Disclosures ............ccceeccccscceeseeesseeeseceseeeeeeceseeeeeceaeeseeeceseeeeeenaeeneees 12
`A. MOONS 0000... eeeeeeseceeceeeseeesceceseeesceceaeesceceaeecaeceaeeeeaeceeeseaeeeaeeseaeceaeeseaeeeeeeseaeeeeeesaes 12
`B. EXDIDItS oo. eee eteceeeseesseeeeeesecesecsceeseceecseeesecsecseeeseceeceeesecceseeeaeseeececeaeenseeneeeaeens 12
`C. WILMIESSES 00... eeceeeeceeceeeeeeeececeaeeececeaeeesceceaeeesaeceaeecaeceaeeeeaeeeaeeceaeceaeeseaeeeeeseaeeeneeesaes 17
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`1. Objections to Expert Testimony ...........ccccecccescceseeeeseeesceeeseceeeeeseenseeenseenes 19
`D. Deposition Testimony .........cccccccccccssccesseeceeseeeseneeeesecessseeessseecseeeesseeesseeeeseeeseaeeens 19
`E. Discovery Designations ...........cccccccscecesecesseeeseceseeeeseceseeceeeceseeceseceseeeeaeenseeenseeeeeenaes 21
`F. Demonstrative Exhibits... ccccecccsececeseeeseeceeeeeececeeeseeeeeaeeceaeceaeeseaeeeaeeeeaeeeneeeeaes 22
`G. Disclosures for Opening Statements ...........cceeccesceeeeeeeceseeeeseceeeeeseeeeeeenseeeteeeeaes 24
`H. Disclosures for Closing Argument ...........c::cccssccsssceesseceeseecsseeeeeseeeeeseeeeeseeeesaeeens 25
`I RESTING oo. eeeceecceescceeseeesceeececeseceseeceseeesaeceseeeaeceseceeaeceseeseaeceseeceaeceseeseseeeseeeeseeeteeeeaes 25
`J. Materials Designated Confidential .0...........ccccccccesceesseeeeseeesseeeeeseeeseeeeesseeeeseeens 25
`Motions in Limine........eceeeseeseesceeseesseeeeeesececeeseeeseceeeeeceseceeeseceseceeeeseceseceeeeeeeseeneeeaeeeseeaes 26
`JULY Charge oo... ecccccccsscccsssecessseeesseecesseeeeseeesseeeseeeeseeeeseneeessaeeeeeeeceseeesseeeseeeeseneeeseaeeees 27
`VOI Dire oes eecceeceseeeseeseeesecsceesecesecececseeeseceeeeseceseceseceeeseceeecseceseceeeseeeaeceeeeeceseeeeeeneeeaeens 28
`Order of Presentation at Trial ......... cc eeceeececeseceeeeseeeeececeaeceeeseaeeeeeseaeeeaeessaeeeeeseaeeeeeeaes 28
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`XI.
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`XI.
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`XIII.
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`XIV.
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page 3 of 43
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`A Opening Statements: ...........cccccescessseeesseeeesseeceseeeeeseeeseseceesseeeseeecseeeeesseeesseeessas 28
`B EVidence?......eeeeecceceseesseeseeesecesecsceesecssecseeeaecsecsecesecaeeseeeseccececeaeceeececeaeceeeeneeeaeens 28
`C Closing Arguments: ..........ccccccscccsssscessseesesseeeseecesseeeesseeessneeessaeeesaeecseeeeseeesseeeeegs 29
`D Agreed Juror NoteD00k ........ceccccceecccesseeseceeeeeseceseceeecnseecaeceseeeeeceseeseeeenseeeeeenaes 29
`Length Of Trial oo... ccccccccscsssseeesseeeeeseeeeseeeseseeeseeeeseeeeeeeeeceaeeesaeeeeaeeceeeeeeeeessneeeseaeeees 29
`Memoranda on Disputed Issues Of Law.........cccccescesceeseceeseeeseceeeeeseceseeeeseceseeeeseeneeenseeeas 30
`List of Pending MOtions............ccccccsscccssseceeseeeesseecssneecsseecesseeeseeeecsseeecsseeeesseeeseeeesseeeseaeeees 30
`Additional Matters .0.......:ceccescessesscesecesecseeeecececsecesecesecseceaeceeeeseeeseceeeceesaeseeeeeeeaeseeeeneeeaeens 32
`A. Trial Conduct and Disclosures ...........cceecceesseceseceeeeeeseeececeaeceeeceaeeeseeceaeeeneeseaeeeseees 32
`B. Handling of Confidential Information at Trial... cee eeceeeeeseeeeeeeeeteceeeeneeeaeens 33
`C. Handling of Source Code at Trial .........cccccecessccessecessnecesseeeesseeeesseeeeseeessseeeeseeens 34
`D. Less than Unanimous Verdict ..........ceceeccesceseeseceseceseeseeesecececeeeaeeeeeeeceaeeneeeneeeaeens 34
`E. Certification 2.0... eeceeseesceeesecesceceaeceeeseaeeeeeceaeceeeesaeeseeceaeceaeeseaeeeeeseaeeeeeseaeeeaeees 34
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`il
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 4 of 43
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`TABLE OF EXHIBITS
`Exhibit Title
`No.
`1 Joint Appearance of Counsel
`2 Statement of the Case
`*Submitted jointly, but contains minor disputed language
`3 Plaintiff Carbyne Biometric, LLC’s Contentions
`4 Defendant Apple Inc.’s Contentions
`5 Plaintiff Carbyne Biometric, LLC’s Exhibit List
`6 Defendant Apple Inc.’s Exhibit List
`7 Joint Exhibit List
`8 Plaintiff Carbyne Biometric, LLC’s Witness List
`9 Defendant Apple Inc.’s Witness List
`10 Plaintiff Carbyne Biometric, LLC’s Deposition Designations
`11 Defendant Apple Inc.’s Deposition Designations
`12 Plaintiff Carbyne Biometric, LLC’s Discovery Designations
`13 Defendant Apple Inc.’s Discovery Designations
`14-A Preliminary Jury Instructions — Clean Copy
`14-B Preliminary Jury Instructions — Disputes and Citations
`15-A Final Jury Instructions — Clean Copy
`15-B Final Jury Instructions — Disputes and Citations
`16 Plaintiff Carbyne Biometric, LLC’s Verdict Form
`17 Defendant Apple Inc.’s Verdict Form
`18 Joint Proposed Voir Dire Questions to be Asked by the Court
`19 Joint Proposed Juror Questionnaire
`20 Defendant Apple Inc.’s Memorandum Objecting to Plaintiff's Composite
`Source Code Exhibit
`21 Defendant Apple Inc.’s Memorandum Regarding Submission on Subject
`Matter Inteligibility to Court and Jury
`22 Defendant Apple Inc.’s Proposed Findings of Fact and Conclusions of
`Law on the Subject Matter Ineligibility of the Asserted Claims
`23 Plaintiff Carbyne Biometric, LLC’s Memorandum Regarding Source
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`Code Dispute
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`ill
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page5 of 43
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`The Pretrial Conference in this case is set for January 14, 2025. Plaintiff Carbyne
`Biometrics, LLC (“Plaintiff’ or “Carbyne”) and Defendant Apple Inc. (“Defendant” or “Apple’’)
`hereby submit the following proposed Joint Pretrial Order pursuant to the Amended Scheduling
`Order (Dkt. 152), the Court’s Standing Order Governing Proceedings (“OGP”’) 4.4— Patent Cases,
`the Court’s Amended Standing Order on Pretrial Procedures and Requirements in Civil Cases, the
`Federal Rules of Civil Procedure, and the Local Rules of this Court.
`
`Pursuant to the Court’s Amended Standing Order on Pretrial Procedures and Requirements
`in Civil Cases, throughout this Joint Pretrial Order and the attached Exhibit, disputed position
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`brought forth by Carbyne are in red and disputed positions brought forth by Apple are in blue.
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`I. APPEARANCE OF COUNSEL
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`Appearances of Counsel are attached as Exhibit 1 and reproduced below.
`
`Attorneys for Plaintiff Attorneys for Defendant
`Joshua W. Budwin Brian C. Nash
`Lead Attorney Regan J. Rundio
`
`Texas State Bar No. 24050347
`jbudwin@mckoolsmith.com
`George T. Fishback, Jr.
`
`Texas State Bar No. 24120823
`gfishback@McKoolSmith.com
`Caroline Burks
`
`Texas State Bar No. 24126000
`eburks@McKoolSmith.com
`McKoo i Smit, P.C.
`
`303 Colorado Street Suite 2100
`Austin, TX 78701
`
`Telephone: (512) 692-8700
`Telecopier: (512) 692-8744
`
`Richard A. Kamprath
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`Texas State Bar No. 24078767
`rkamprath@McKoolSmith.com
`Bradley Jarrett
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`Texas State Bar No. 24128518
`bjarrett@mckoolsmith.com
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`MORRISON & FOERSTER LLP
`300 Colorado St., Suite 1800
`Austin, TX 78701
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`Tel: (512) 617-0650
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`Fax: (737) 910-0730
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`Email: BNash@mofo.com
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`Email: Rrundio@mofo.com
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`James R. Batchelder (pro hac vice)
`Andrew Radsch
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`James Mack
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`ROPES & GRAY LLP
`
`1900 University Avenue
`
`East Palo Alto, CA 94303-2284
`Tel: 650-617-4000
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`Fax: 650-617-4090
`James.Batchelder@ropesgray.com
`Andrew.Radsch@ropesgray.com
`James.Mack@ropesgay.com
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`Cassandra Roth (pro hac vice)
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 6 of 43
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`Daniel Iliasevitch
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`Texas State Bar No. 24125631
`diliasevitch@McKoolSmith.com
`McKOOL SMITH, P.C.
`
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
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`Telephone: (214) 978-4210
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`Jennifer L. Truelove
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`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`Kevin Burgess
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`Texas State Bar No. 24006927
`kburgess@mckoolsmith.com
`MCKOOL SMITH, P.C.
`
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
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`Phone: (903) 923-9000
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`Rachael S. Bacha (pro hac vice)
`ROPES & GRAY LLP
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`1211 Avenue of the Americas
`New York, NY 10036-8704
`Phone: +1-212-596-9000
`
`Fax: +1-212-596-9090
`Cassandra.Roth@ropesgray.com
`Rachael.Bacha@ropesgray.com
`
`Allen S. Cross (pro hac vice)
`Nicole Pobre (pro hac vice)
`ROPES & GRAY LLP
`
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006
`Telephone: (202) 508-4600
`Facsimile: (202) 508-4650
`Allen.cross@ropesgray.com
`Nicole.Pobre@ropesgray.com
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`S. Lara Ameri (pro hac vice)
`ROPES & GRAY LLP
`Prudential Tower
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`800 Boylston Street
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`Boston, MA 02199-3600
`Phone: +1-617-951-7000
`Fax: +1-617-951-7050
`Lara.Ameri@ropesgray.com
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`Jeffrey T. Quilici
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`TX State Bar No. 24083696
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
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`200 W. 6th Street, Suite 2250
`Austin, TX 78701
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`Tel: (512) 582-6950
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`Fax: (512) 582-6949
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`Email: jquilici@orrick.com
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`Elizabeth R. Moulton (pro hac vice pending)
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
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`405 Howard Street
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`San Francisco, CA 94105
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`Tel: (415) 773-5700
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`Fax: (415) 773-5759
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`Email: emoulton@orrick.com
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 7 of 43
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`II. STATEMENT OF JURISDICTION
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`This Court has subject matter jurisdiction over this action under Title 28, U.S.C. §§ 1331
`and 1338(a), because this action arises under the Patent Laws of the United States, 35 U.S.C. § 1
`et seq. Subject matter jurisdiction, personal jurisdiction, and venue under 28 U.S.C. §§ 1391(b)
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`and 1400(b) are not disputed in this case.!
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`Il. STATEMENT OF THE CASE
`
`The Parties agree to the statement of the case, with two remaining disputes, as reproduced
`below and attached as Exhibit 2:
`
`This is a civil action relating to the alleged infringement and invalidity of five patents
`assigned to Plaintiff Carbyne Biometrics, LLC (““Carbyne”’), which fall into two groups. The first
`group is called the “Authentication Patents” and includes two patents: U.S. Patent Nos. 11,475,105
`(‘the °105 Patent”) and 11,514,138 (“the ’138 Patent’). The second group is called the “Fraud
`Reduction Patents” and includes three patents: U.S. Patent Nos. 9,972,010 (“the ’010 Patent’’);
`10,713,656 (“the ’656 Patent’); and 11,526,886 (“the ’886 Patent”). These patents are collectively
`referred to as the “Asserted Patents.”
`
`Carbyne alleges that Defendant Apple, Inc. (“Apple”) directly and indirectly infringes
`claims 1, 9, 14, and 35 of the ’105 Patent; claims 1, 7, 8, and 25 of the ’138 Patent; claims 1, 6,
`and 9 of the ’010 Patent; claims | and 8 of the ’656 Patent; and claims 1, 12, and 14 of the ’886
`Patent (collectively the “Asserted Claims”). Carbyne alleges that Apple infringes the
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`Authentication Patents’ Asserted Claims of the ’105 Patent and the ’138 Patent by making, offering
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`' As to the ’105 and ’138 Patents, Apple contests Carbyne’s standing to bring suit.
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page 8 of 43
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`to sell, using or inducing consumer use of, selling, or importing into the United States certain of
`Apple’s iPhones, iPads, Mac computers, together with Apple Magic Keyboards, and Apple’s
`Vision Pro headset to access a website or application using Passkeys with Face ID, Touch ID, or
`Optic ID. Carbyne alleges that Apple infringes the Fraud Reduction Patents’ Asserted Claims of
`the ’010 Patent, the °656 Patent, and the ’886 Patent by making, offering to sell, using or inducing
`consumer use of, selling, or importing into the United States certain of Apple’s iPhones, iPads,
`and Apple’s Vision Pro headsets that are configured to perform Apple Cash peer-to-peer transfers
`using Face ID or Optic ID. Carbyne seeks damages in the form of a reasonable royalty.
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`Apple contends that Apple engineers [invented | developed] Apple’s security features, and
`denies that it infringed or infringes any of the Asserted Claims. Apple also alleges that the Asserted
`Claims are invalid including because prior art anticipated or rendered obvious each of the Asserted
`Claims. In addition, Apple alleges that the Asserted Claims of the [’010 Patent, the *656 Patent,
`and the ’886 Patent | Fraud Reduction Patents] are invalid for lacking an adequate written
`description of, and not enabling practice of, the full scope of what is claimed. Because Apple
`alleges the Asserted Patents are not infringed or invalid, Apple denies that Carbyne is entitled to
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`any relief. Carbyne denies that the Asserted Claims are invalid.
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`IV. PARTIES’ CONTENTIONS
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`The Parties’ contentions are attached as Exhibit 3 (Plaintiff) and Exhibit 4 (Defendant).
`By providing these contentions, the Parties do not concede that any of the following issues are
`appropriate for trial (at all or to a jury). The Parties also do not waive any of their pending motions
`or any future motions they may file. Further, rulings on pending motions may render some of these
`issues moot.
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`A. Carbyne’s Statement of Contentions
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 9 of 43
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`Carbyne’s contentions in this case are detailed in its pleadings, discovery responses, expert
`reports, and other filings and submissions in this case, including Carbyne’s motions for partial
`summary judgment, Daubert motions, motions in limine, and any other pending motions, which
`are incorporated here by reference; the contentions below do not include every detail underlying
`each contention.
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`1. Carbyne is the assignee of U.S. Patent Nos. 11,475,105 (‘the ’105 Patent’) and
`11,514,138 (“the ’138 Patent’) both titled “Authentication Translation” (the ’105 and ’138 Patents,
`together are the “Authentication Patents”). The priority date of the Authentication Patents is
`January 17, 2012.
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`2. Carbyne contends that Apple literally infringes directly or through inducement of its
`customers, claims 1, 9, 14, and 35 of the 7105 Patent and claims 1, 7, 8, and 25 of the ’138 Patent
`in violation of 35 U.S.C. § 271. These claims may also be referred to as the “Authentication
`Asserted Claims.” Carbyne incorporates by reference the expert reports of its expert Dr. Mark
`Jones.
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`3. Carbyne contends that Apple infringes each of the Asserted Claims including the
`Authentication Asserted Claims by making, using, selling, offering for sale, importing, and/or
`distributing within the United States certain of Apple’s iPhones, iPads, Mac computers, together
`with Apple Magic Keyboards, and Apple’s Vision Pro headset to access a website or application
`using Passkeys with Face ID, Touch ID, or Optic ID.
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`4. Carbyne denies that Apple has shown by clear and convincing evidence that the
`Authentication Asserted Claims are obvious over Apple’s asserted prior art.
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`5. Carbyne is the assignee of U.S. Patent Nos. 9,972,010 (the ’010 Patent), 10,713,656
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`(the °656 Patent), and 11,526,886 (the ’886 Patent), all titled “Method, Medium, and System for
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 10 of 43
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`Reducing Fraud” (the ’010, °656, and ’886 are the “Fraud Reduction Patents” and together the
`Authentication Patents and Fraud Reduction Patents are the “Asserted Patents’’). The priority date
`of the Fraud Reduction Patents is 17, 2010.
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`6. Carbyne contends that Apple literally infringes directly or through inducement of its
`customers, claims 1, 6, and 9 of the ’010 Patent, claims | and 8 of the ’656 Patent, and claims 1,
`12, and 14 of the ’886 Patent in violation of 35 U.S.C. § 271. These claims may also be referred
`to as the “Fraud Reduction Asserted Claims.” Carbyne incorporates by reference the expert reports
`of its expert Dr. Eric Cole.
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`7. Carbyne contends that Apple infringes each of the Asserted Claims including the
`Fraud Reduction Asserted Claims by making, using, selling, offering for sale, importing, and/or
`distributing within the United States certain of Apple’s iPhones, iPads, and Apple’s Vision Pro
`headsets that are configured to perform Apple Cash peer-to-peer transfers using Face ID or Optic
`ID.
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`8. Carbyne denies that Apple has shown by clear and convincing evidence that the
`Fraud Reduction Asserted Claims are obvious over Apple’s asserted prior art.
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`9. Carbyne contends that it is entitled to damages in the form of a reasonable royalty.
`Carbyne incorporates by reference the expert reports of Mr. Justin Blok with respect to damages
`and the report of survey expert Dr. Rebecca Reed-Arthurs.
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`10. Carbyne denies each of Apple’s contentions.
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`11. Carbyne seeks the following relief:
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`a. Entry of judgment declaring that Apple infringes the Asserted Claims of each
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`of the Asserted Patents;
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page 11 of 43
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`b. An order awarding damages sufficient to compensate Carbyne for Apple’s
`infringement of the Asserted Patents, but in no event less than a reasonable
`royalty, including supplemental damages post-verdict, together with pre-
`judgment and post-judgment interest, and costs;
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`c. Entry of judgment declaring that this case is exceptional and awarding Carbyne
`its costs and reasonable attorney fees pursuant to 35 U.S.C. § 285;
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`d. An accounting for acts of infringement;
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`e. Such other equitable relief which may be requested and to which Carbyne is
`entitled; and
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`f. Such other relief as is deemed appropriate by this Court.
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`12. Carbyne contends that its damages for Apple’s infringement of each of the Asserted
`Claims of the Asserted Patents are not barred or limited by 35 U.S.C. § 287 or any other legal or
`equitable theory asserted by Apple.
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`B. Apple’s Statement of Contentions
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`By providing these contentions, Apple does not concede that all of these issues are
`appropriate for trial; nor do the contentions below include every detail underlying each contention.
`Apple does not waive any of its pending motions, including any motions in limine, motions for
`summary judgment, motions to dismiss, Daubert motions, motions to strike, request for
`supplemental claim construction proceedings, or request for a finding that Carbyne lacks standing
`as to the °105 and ’138 Patents and any other already pending and future motions it may file.
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`1. Apple contends that it does not infringe and has not literally infringed, directly or
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`through inducement, any valid and enforceable claim of the Asserted Patents.
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`Case 1:23-cv-00324-ADA Document 351 Filed 12/18/24 Page 12 of 43
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`2. Apple contends that the Asserted Claims recite patent-ineligible subject matter and
`are invalid under 35 U.S.C. § 101 because the claims are directed to abstract ideas or other non-
`statutory subject matter and lack any inventive concept.
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`3. Apple contends that the Asserted Claims of the ’105 and the ’138 Patents are invalid
`under 35 U.S.C. § 102 because the claims are anticipated by the prior art.
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`4. Apple contends that the Asserted Claims are invalid under 35 U.S.C. § 103 because
`the claims are obvious in view of the prior art.
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`5. Apple contends the Asserted Claims of the ’010, ’656, and ’886 Patents are invalid
`for failure to satisfy the conditions set forth in 35 U.S.C. § 112, including inadequate written
`description and lack of enablement.
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`6. Apple contends that Carbyne lacks standing to assert and capacity to sue on the 7105
`and °138 Patents.
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`7. Apple contends that Carbyne’s claims are barred by the doctrines of estoppel,
`waiver, and acquiescence.
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`8. Apple had no presuit notice or knowledge of any of the Asserted Patents.
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`9. Any damages for Apple’s infringement of the ’010, ’656, and ’886 Patents are barred
`or limited by 35 U.S.C. § 287.
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`10. Carbyne has failed to plead compliance with 35 U.S.C. § 287.
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`11. | Carbyne is not entitled to a reasonable royalty.
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`12. Apple seeks the following relief:
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`A. A declaration that Apple does not literally infringe and has not literally
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`infringed, directly or through inducement, any Asserted Claim;
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page 13 of 43
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`B.
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`A declaration that all Asserted Claims are invalid under the Patent Act, Title
`35 of the United States Code, including without limitation, 35 U.S.C. §§
`101, 102, and 103;
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`A declaration that all Asserted Claims of the ’010, ’656, and ’886 Patents
`are invalid for failure to comply with one or more requirements of the Patent
`Act, Title 35 of the United States Code, including without limitation, 35
`U.S.C. § 112;
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`A declaration that Carbyne lacks standing to assert and capacity to sue on
`the °105 and °138 Patents.
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`A finding that this case is exceptional under 35 U.S.C. § 285 and/or other
`applicable laws and/or the Court’s inherent power, and awarding Apple its
`costs, expenses, and disbursements in this action, including reasonable
`attorneys’ fees; and
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`Awarding Apple any other and additional relief as this Court deems just and
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`proper.
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`V. STIPULATED FACTS
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`The parties agree to the following stipulated facts. The parties will meet and confer after
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`final rulings on all pretrial issues have been entered to determine whether any additional facts may
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`be stipulated:
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`1. Carbyne Biometrics, LLC is a Delaware limited liability company having its principal
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`place of business at 7 East 20th Street #12F, New York, NY 10003.
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`2. Apple Inc. is a corporation organized and existing under the laws of California with its
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`principal place of business at 1 Apple Park Way, Cupertino, California.
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`Case 1:23-cv-00324-ADA Document 351 _ Filed 12/18/24 Page 14 of 43
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`3. The records of the United States Patent Office identify Carbyne Biometrics, LLC as the
`identified | is assignee of U.S. Patent No. 11,475,105, titled “Authentication Translation” (“the
`°105 Patent’’); U.S. Patent No. 11,514,138, titled “Authentication Translation” (“the ’138 Patent");
`U.S. Patent No. 9,972,010, titled “Method, Medium, and System for Reducing Fraud” (“the ’010
`Patent’); U.S. Patent No. 10,713,656, titled “Method, Medium, and System for Reducing Fraud”
`(‘the °656 Patent’); and U.S. Patent No. 11,526,886, titled “Method, Medium, and System for
`Reducing Fraud” (“the ’886 Patent’’)
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`4. On March 23, 2023, Carbyne filed a Complaint asserting infringement of the ’886, ’656,
`’010, °105, and ’138 Patents (collectively, the “Asserted Patents” or “Patents-in-Suit’”). Carbyne
`served Apple with a copy of the complaint on April 3, 2023.
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`5. The 105 Patent issued on October 18, 2022 as a continuation-in-part of application No.
`17/027,481, filed on September 21, 2020, which is a continuation of application No. 16/773,767,
`filed on January 27, 2020, now U.S. Patent No. 10,929,512, which is a continuation of application
`No. 16/563,715, filed on September 6, 2019, now U.S. Patent No. 10,824,696, which is a
`continuation of application No. 16/273,797, filed on February 12, 2019, now U.S. Patent No.
`10,521,568, which is a continuation of application No. 15/042,636, filed on February 12, 2016,
`now U.S. Patent No. 10,360,351, which is a continuation of application No. 13/706,254, filed on
`December 5, 2012, now U.S. Patent No. 9,294,452. The ?105 Patent claims priority to provisional
`application No. 61/587,387, filed on January 17, 2012, and provisional application No.
`61/569,112, filed on December 9, 2011.
`
`6. The °138 Patent issued on November 29, 2022 as a continuation of application No.
`16/773,767, filed on January 27, 2020, now U.S. Patent No. 10,929,512, which is a continuation
`
`of application No. 16/563,715, filed on September 6, 2019, now U.S. Patent No. 10,824,696, which
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`is a continuation of application No. 16/273,797, filed on February 12, 2019, now U.S. Patent No.
`10,521,568, which is a continuation of application No. 15/042,636, filed on February 12, 2016,
`now U.S. Patent No. 10,360,351, which is a continuation of application No. 13/706,254, filed on
`December 5, 2012, now U.S. Patent No. 9,294,452. The ’138 Patent claims priority to provisional
`application No. 61/587,387, filed on January 17, 2012, and provisional application No.
`61/569,112, filed on December 9, 2011.
`
`7. The ’?010 Patent issued on May 15, 2018 as a continuation of application No. 13/099,981,
`filed on May 3, 2011, now U.S. Patent No. 8,458,041. The °010 Patent claims priority to
`provisional application No. 61/ 332,140, filed on May 6, 2010.
`
`8. The 656 Patent issued on July 14, 2020 as a continuation of application No. 13/875,245,
`filed on May 1, 2013, now U.S. Patent No. 9,972,010, which is a continuation of application No.
`13/099,981, filed on May 3, 2011, now U.S. Patent No. 8,458,041. The ’656 Patent claims priority
`to provisional application No. 61/332,140, filed on May 6, 2010.
`
`9. The °886 Patent issued on December 13, 2022 as a continuation of application No.
`15/948,744, filed on April 9, 2018, now U.S. Patent No. 10,713,656, which is a continuation of
`application No. 13/875,245, filed on May 1, 2013, now U.S. Patent No. 9,972,010, which is a
`continuation of application No. 13/099,981, filed on May 3, 2011, now U.S. Patent No. 8,458,041.
`The ’886 Patent claims priority to provisional application No. 61/332,140, filed on May 6, 2010.
`
`Any party, with prior notice to all other parties, may read any or all of the stipulated facts
`to the jury, and will be charged for the time used to do so. If one party reads a portion of the
`uncontested facts, the other party may immediately thereafter read any additional portion as
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`appropriate for purposes of completeness. The parties agree to discuss in good faith after the Final
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`Pretrial Conference a narrowing of the stipulated facts that may be read to the jury to the extent
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`the Court’s rulings render some of these facts irrelevant.
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`VI. STIPULATIONS AND TRIAL DISCLOSURES
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`The following stipulations were agreed upon by the parties as discussed below and are
`made a part of this Pretrial Order. The parties agree to the following procedure which will govern
`the disclosure of witnesses, exhibits, deposition testimony and demonstratives to use at trial and
`the process to identify any objections remaining between the parties with regard to these
`disclosures:
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`A. Motions
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`All motions for judgment as a matter of law pursuant to Fed. R. Civ. P. 50(a) will be
`brought to the Court, and responded to, orally, and argued during breaks when the jury is out of
`the courtroom or at the beginning or end of the day after the jury has been dismissed. The parties
`agree that such motions will be raised with the Court at the first break after the appropriate point
`during trial so that the Court may inform the parties when such motions will be heard and when
`the Court wishes to receive briefing pursuant to Fed. R. Civ. P. 50(b). Unless otherwise ordered,
`all motions under Rule 50(b) must be filed no later than 28 days after the entry of judgment in
`accordance with Federal Rule of Civil Procedure 50(b). Responses to any such motion must be
`filed within 28 days of service of the motion. All replies in support of the motions must be filed
`within 21 days of service of any oppositions. The parties reserve their right to seek reasonable
`extension of these deadlines subject to the Court’s approval.
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`B. Exhibits
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`The Exhibit Lists set forth the parties’ exhibits for their respective cases-in-chief; the lists
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`do not include potential impeachment material that is not introduced into evidence. The parties
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`reserve the right to offer exhibits for purposes of impeachment that are not included in the Exhibit
`Lists. Plaintiff's trial exhibits are identified with the prefix “PX,” starting with PX-1 and
`Defendant’s trial exhibits are identified with the prefix “DTX,” starting with DTX-1.
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`Plaintiff's Exhibit List with Defendant’s objections included is attached as Exhibit 5.
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`Defendant’s Exhibit List with Plaintiff’s objections included is attached as Exhibit 6.
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`The Parties’ Joint Exhibit List, including documents identified by both parties and not
`objected to, is attached as Exhibit 7.
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`A Party will provide opposing counsel with a list of exhibits to be used in connection with
`direct examination of live witnesses and/or deposition designations, including identifying with
`which witness the exhibit will be used, and will make any non-documentary, non-source code trial
`exhibits available for physical inspection, by 7:00 p.m. CT one (1) calendar day before their
`intended use and will make any source code trial exhibits available for inspection by 7:00 p.m. CT
`two (2) calendar days before their intended use, and objections will be provided no later than 9:00
`p.m. CT the day before their intended use. The Parties are to meet and confer to resolve any
`objections at 10:00 p.m. CT the day before the exhibits’ intended use. If good faith efforts to
`resolve the objections fail, the Party objecting to the exhibits shall bring its objections to the
`Court’s attention in the morning on the day of the exhibits’ intended use or as soon thereafter as
`the Court permits, for resolution before the jury is seated.
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`Each Party may use an exhibit that is listed on the other Party’s exhibit list, to the same
`effect as though it were listed on its own exhibit list, subject to evidentiary objections. Any exhibit,
`once admitted, may be used by either Party. The listing of an exhibit by a Party on its exhibit list
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`does not waive any objections to that exhibit by the listing Party should the opposing Party attempt
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`to offer it into evidence. In other words, a Party does not waive its objections to an exhibit by
`including that exhibit on its own exhibit list, or by the exhibit’s inclusion on the joint exhibit list.
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`The fact that a Party failed to introduce any exhibit appearing on its list shall not be
`commented on during trial. Notwithstanding this prohibition, without commenting that the proof
`was available in an unintroduced exhibit on the exhibit list, the parties are free to comment on the
`lack of evidence or failure of proof as to any fact, even if another Party may contend that evidence
`of that fact was contained in any exhibit on the exhibit list.
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`With the exception of discovery admissions (i.e., interrogatory responses or requests for
`admission responses), no exhibit will be admitted unless offered into evidence through a witness,
`who must at least be shown the exhibit. Exhibits with noted objections may not be published,
`displayed, or otherwise shown to the jury until after they have been admitted into evidence. Once
`admitted, counsel may publish exhibits to the jury without requesting to do so.
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`If a Party proposes to read a statement by a Party opponent from any pleading, request for
`admission response, interrogatory response, or from the Joint Statement of Stipulated Facts, they
`will provide notice of exactly the portion they intend to use by at least 7:00 p.m. CT the day before
`the statement is intended to be used at trial. Any objections will be provided no later than 9:00
`p.m. CT the day before their intended use. The Parties are to meet and confer to resolve any
`objections at 10:00 p.m. CT the day before their intended use. If good faith efforts to resolve
`objections fail, the objecting Party shall bring its objections to the Court’s attention the next
`morning before the jury is seated. This notice provision does not apply when a Party intends to use
`the statement during cross-examination or for impeachment purposes.
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`If a Party intends to use during its opening statement an exhibit to which the other Party
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`has objected, the Party shall disclose the exhibit(s) by 7:00 p.m. CT the day before its opening
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`statement. If the opposing Party continues to object to any such exhibit(s), it will provide any
`objections by 9:00 p.m. CT the day before the other Party’s opening statement. The Parties are to
`meet and confer to resolve any objections to these exhibit(s) at 10:00 p.m. CT the day before the
`relevant opening statement. If good faith efforts to resolve objections to the exhibits to be used in
`an opening statement fail, the objecting Party shall promp