[Plaintiff],
`
`v.
`
`[Defendant].
`
`United States District Court
`Western District of Texas
`Waco Division
`
`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`CIVIL ACTION NO.
`JUDGE ALBRIGHT
`
`ORDER GOVERNING PROCEEDINGS – PATENT CASE
`
`This Order shall govern proceedings in this case. The following deadlines are hereby set:
`
`1. This case is SET for a telephonic Rule 16 Case Management Conference on
`______________ at ____. Participants shall dial into the following number 5 minutes
`before the scheduled time: 866.434.5269; access code 967-8090. Lead counsel for each
`party, and all unrepresented parties, shall be present. Client representatives are welcome
`to attend, but such attendance is not required. The Court expects the parties to be
`prepared to discuss any pre-Markman issues raised in the parties’ joint Case Readiness
`Status Report.
`
`2.
`
`3.
`
`(Not later than 7 days before the CMC). Plaintiff shall serve preliminary infringement
`contentions in the form of a chart setting forth where in the accused product(s) each
`element of the asserted claim(s) are found. Plaintiff shall also identify the priority date
`(i.e. the earliest date of invention) for each asserted claim and produce: (1) all documents
`evidencing conception and reduction to practice for each claimed invention, and (2) a
`copy of the file history for each patent in suit.
`
`(Two weeks after the CMC). The Parties shall submit an agreed Scheduling Order. If the
`parties cannot agree, the parties shall submit a separate Joint Motion for entry of each
`Order briefly setting forth their respective positions on items where they cannot agree.
`Absent agreement of the parties, the Plaintiff shall be responsible for the timely
`submission of this and other Joint filings.
`
`4.
`
`(Two weeks after the CMC). Deadline for Motions to Transfer. The Court also adopts
`the following page limits and briefing schedule for Motions to Transfer:
`
`a. Opening – 15 pages
`
`b. Response – 15 pages, due 14 days after the Opening brief
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`c. Reply – 5 pages, due 7 days after the Response brief
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`5. (Seven weeks after the CMC). Defendant shall serve preliminary invalidity contentions
`in the form of (1) a chart setting forth where in the prior art references each element of
`the asserted claim(s) are found, (2) an identification of any limitations the Defendant
`contends are indefinite or lack written description under section 112, and (3) an
`identification of any claims the Defendant contends are directed to ineligible subject
`matter under section 101. Defendant shall also produce (1) all prior art referenced in the
`invalidity contentions, (2) technical documents, including software where applicable,
`sufficient to show the operation of the accused product(s), and (3) summary, annual sales
`information for the accused product(s) for the two years preceding the filing of the
`Complaint,1 unless the parties agree to some other timeframe.
`
`DISCOVERY
`
`Except with regard to venue, jurisdictional, and claim construction-related discovery, all other
`discovery is stayed until after the Markman hearing. Notwithstanding this general stay of
`discovery, the Court will permit limited discovery by agreement of the parties, or upon request,
`where exceptional circumstances warrant. For example, if discovery outside the United States is
`contemplated, the Court will be inclined to allow such discovery to commence before the
`Markman hearing.
`
`With respect to venue and jurisdictional discovery, the Court generally grants leave for the
`parties to conduct targeted discovery. The Court’s default venue/jurisdiction discovery limits are
`as follows:
`
`
`1. Interrogatories: 5 per party
`2. Requests for Production: 5 per party
`3. Fact depositions: 4 hours for a 30(b)(6) witness per party
`
`
`To the extent a party provides multiple declarations in support or against a motion to transfer
`venue or a motion to dismiss based on lack of jurisdiction, the Court will allow the other side to
`have additional interrogatories (e.g., 2 more), RFPs (e.g., 2 more), and deposition time (e.g., 2
`more hours). To the extent the parties cannot agree what the additional number of
`interrogatories, RFPs, and deposition time should be, the Court encourages the parties to contact
`the Court to request a telephonic discovery hearing.
`
`Following the Markman hearing, the following discovery limits will apply to this case. The
`Court will consider reasonable requests to adjust these limits should circumstances warrant.
`
`
`1. Interrogatories: 30 per side2
`
`
`1 With regard to expired patents, the sales information shall be provided for the two years preceding expiration.
`2 A “side” shall mean the plaintiff (or related plaintiffs suing together) on the one hand, and the defendant (or related
`defendants sued together) on the other hand. In the event that the Court consolidates related cases for pretrial
`purposes, with regard to calculating limits imposed by this Order, a “side” shall be interpreted as if the cases were
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`2. Requests for Admission: 45 per side
`3. Requests for Production: 75 per side
`4. Fact Depositions: 70 hours per side (for both party and non-party witnesses combined)
`5. Expert Depositions: 7 hours per report3
`
`
`Electronically Stored Information. As a preliminary matter, the Court will not require general
`search and production of email or other electronically stored information (ESI), absent a showing
`of good cause. If a party believes targeted email/ESI discovery is necessary, it shall propose a
`procedure identifying custodians and search terms it believes the opposing party should search.
`The opposing party can oppose, or propose an alternate plan. If the parties cannot agree, they
`shall contact chambers to schedule a call with the Court to discuss their respective positions.
`
`
`DISCOVERY DISPUTES
`
`A party may not file a Motion to Compel discovery unless: (1) lead counsel have met and
`conferred in good faith to try to resolve the dispute, and (2) the party has contacted the Court’s
`law clerk (with opposing counsel) to arrange a telephone conference with the Court to
`summarize the dispute and the parties respective positions. Summaries shall be neutral and non-
`argumentative. After hearing from the parties, the Court will determine if further briefing is
`required.
`
`
`PROTECTIVE ORDER
`
`Pending entry of the final Protective Order, the Court issues the following interim Protective
`Order to govern the disclosure of confidential information in this matter:
`
`
`If any document or information produced in this matter is deemed confidential by the
`producing party and if the Court has not entered a protective order, until a protective
`order is issued by the Court, the document shall be marked “confidential” or with some
`other confidential designation (such as “Confidential – Outside Attorneys Eyes Only”) by
`the disclosing party and disclosure of the confidential document or information shall be
`limited to each party’s outside attorney(s) of record and the employees of such outside
`attorney(s).
`
`If a party is not represented by an outside attorney, disclosure of the confidential
`document or information shall be limited to one designated “in house” attorney, whose
`identity and job functions shall be disclosed to the producing party 5 days prior to any
`such disclosure, in order to permit any motion for protective order or other relief
`regarding such disclosure. The person(s) to whom disclosure of a confidential document
`or information is made under this local rule shall keep it confidential and use it only for
`purposes of litigating the case.
`
`proceeding individually. For example, in consolidated cases the plaintiff may serve up to 30 interrogatories on each
`defendant, and each defendant may serve up to 30 interrogatories on the plaintiff.
`3 For example, if a single technical expert submits reports on both infringement and invalidity, he or she may be
`deposed for up to 14 hours in total.
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`CLAIM CONSTRUCTION ISSUES
`
`Terms for Construction. Based on the Court’s experience, the Court believes that it should
`have presumed limits on the number of claim terms to be construed. The “presumed limit” is the
`maximum number of terms that each side may request the Court to construe without further
`leave of Court. If the Court grants leave for the additional terms to be construed, depending on
`the complexity and number of terms, the Court may split the Markman hearing into multiple
`hearings.
`
`The presumed limits based on the number of patents-in-suit are as follows:
`
`
`Limits for Number of Claim Terms to be Construed
`
`1-2 Patents
`8 terms
`
`3-5 Patents
`10 terms
`
`More than 5 Patents
`12 terms
`
`
`When the parties submit their joint claim construction statement, in addition to the term and the
`parties’ proposed constructions, the parties should indicate which party or side proposed that
`term, or if that was a joint proposal.
`
`Claim Construction Briefing. The Court will require non-simultaneous claim construction
`briefing with the following default page limits; however, where exceptional circumstances
`warrant, the Court will consider reasonable requests to adjust these limits. These page limits
`shall also apply collectively for consolidated cases; however, the Court will consider reasonable
`requests to adjust page limits in consolidated cases where circumstances warrant. In addition,
`the Court is very familiar with the law of claim construction and encourages the parties to forego
`lengthy recitations of the underlying legal authorities and instead focus on the substantive issues
`unique to each case.
`
`Unless otherwise agreed by the parties, all filings will take place at 5:00 p.m. CT.
`
`Unless otherwise agreed to by the parties, the default order of terms in the parties’ briefs shall be
`based on 1) the patent number (lowest to highest), the claim number (lowest to highest), and
`order of appearance within the lowest number patent and claim. An example order may be as
`follows:
`
`
`1. 10,000,000 Patent, Claim 1, Term 1
`2. 10,000,000 Patent, Claim 1, Term 2 (where Term 2 appears later in the claim than does
`Term 1)
`3. 10,000,000 Patent, Claim 2, Term 3 (where Term 3 appears later in the claim than does
`Terms 2 and 3)
`4. 10,000,001 Patent, Claim 1, Term 4
`5. 10,000,001 Patent, Claim 3, Term 5
`6. 10,000,002 Patent, Claim 2, Term 6
`
`
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`To the extent that the same or similar terms appear in multiple claims, those same or similar
`terms should be ordered according to the lowest patent number, lowest claim number, and order
`of appearance within the patent and claim.
`
`
`Page Limits for Markman Briefs
`
`1-2 Patents
`20 pages
`
`3-5 Patents
`30 pages
`
`20 pages
`
`30 pages
`
`10 pages
`
`15 pages
`
`10 pages
`
`15 pages
`
`More than 5 Patents
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
`
`Brief
`Opening
`(Plaintiff)
`
`Response
`(Defendant)
`
`Reply
`(Plaintiff)
`
`Sur-Reply
`(Defendant)
`
`
`
`
`
`Technology Tutorials and Conduct of the Markman Hearing
`
`
`Technology tutorials are optional. If the parties would like to submit one, the tutorial should be
`in electronic form, with voiceovers, and submitted at least one week before the Markman
`hearing. If a party believes a live tutorial would be of particular benefit to the Court, the parties
`should contact the Court to request a Zoom or telephonic tutorial so that the tutorial can be
`scheduled to occur at least a week before the Markman hearing. In general, tutorials should be:
`(1) directed to the underlying technology (rather than argument related to infringement or
`validity), and (2) limited to 15 minutes per side. For the Court’s convenience, the tutorial may
`be recorded, but will not be part of the record. Parties may not rely on or cite to the tutorial in
`other aspects of the litigation.
`
`The Court generally sets aside one half day for the Markman hearing; however, the Court is open
`to reserving more or less time, depending on the complexity of the case and input from the
`parties. As a general rule, the party opposing the Court’s preliminary construction shall go first.
`If both parties are unwilling to accept the Court’s preliminary construction, the Plaintiff shall
`typically go first.
`
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`GENERAL ISSUES
`
`1. The Court will entertain reasonable requests to streamline the case schedule and discovery
`and encourages the parties to contact the Court’s law clerk (with opposing counsel) to
`arrange a call with the Court when such interaction might help streamline the case.
`
`2. To the extent the parties need to email the Court, the parties should use the following email
`address: TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov.
`
`3. The Court is generally willing to extend the response to the Complaint up to 45 days if
`agreed by the parties. However, longer extensions are disfavored and will require good
`cause.
`
`4. Plaintiff must file a notice informing the Court when an IPR is filed, the expected time for an
`institution decision, and the expected time for a final written decision, within two weeks of
`the filing of the IPR.
`
`5. After the trial date is set, the Court will not move the trial date except in extreme situations.
`To the extent a party believes that the circumstances warrant continuing the trial date, the
`parties are directed to contact the Court to request a telephonic hearing.
`
`6. The Court does not have a limit on the number of motions for summary judgment (MSJs);
`however, absent leave of Court, the cumulative page limit for Opening Briefs for all MSJs is
`40 pages per side.
`
`7. There may be instances where the submission of substantive briefs via audio file will be of
`help to the Court. If a party is contemplating submitting a brief via audio file it should
`contact the Court for guidance on whether it would be helpful to the Court. However, the
`Court has determined that audio recordings of Markman briefs are of limited value and those
`need not be submitted. The recordings shall be made in a neutral fashion, shall be verbatim
`transcriptions without additional colloquy (except that citations and legal authority sections
`need not be included), and each such file shall be served on opposing counsel. The Court
`does not have a preference for the manner of recording and has found automated software
`recordings, as well as attorney recordings, to be more than satisfactory. Audio files shall be
`submitted via USB drive, Box (not another cloud storage)4, or email to the law clerk (with a
`cc to opposing counsel) and should be submitted in mp3 format.
`
`8. For Markman briefs, summary judgment motions, and Daubert motions, each party shall
`deliver to Chambers one (1) paper copy of its Opening, Response, and Reply briefs, omitting
`attachments, at least a week before the hearing. Each party shall also provide an electronic
`copy of the briefs and exhibits via cloud storage5 or USB drive. For Markman briefs, the
`parties should also include a (1) paper copy of all patents-in-suit and the Joint Claim
`
`4 The parties should contact the law clerk to request a Box link so that the party can directly upload the files to the
`Court’s Box account.
`5 The parties should contact the law clerk to request a Box link so that the party can directly upload the files to the
`Court’s Box account. The filenames for any exhibits should be a description of the exhibit, e.g., “U.S. Patent No.
`10,000,000” or “Prosecution history for 10,000,000 (January 20, 2020, Office Action).”
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`Construction Statement. To the extent the Court appoints a technical adviser, each party
`shall deliver the same to the technical adviser.
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`APPENDIX A – DEFAULT SCHEDULE
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`Deadline
`
`Item
`
`7 days before CMC
`
`Plaintiff serves preliminary6 infringement contentions in the
`form of a chart setting forth where in the accused product(s)
`each element of the asserted claim(s) are found. Plaintiff shall
`also identify the earliest priority date (i.e. the earliest date of
`invention) for each asserted claim and produce: (1) all
`documents evidencing conception and reduction to practice
`for each claimed invention, and (2) a copy of the file history
`for each patent in suit.
`
`2 weeks after CMC
`
`Deadline for Motions to Transfer.
`
`7 weeks after CMC
`
`Defendant serves preliminary invalidity contentions in the
`form of (1) a chart setting forth where in the prior art
`references each element of the asserted claim(s) are found, (2)
`an identification of any limitations the Defendant contends are
`indefinite or lack written description under section 112, and
`(3) an identification of any claims the Defendant contends are
`directed to ineligible subject matter under section 101.
`Defendant shall also produce (1) all prior art referenced in the
`invalidity contentions, (2) technical documents, including
`software where applicable, sufficient to show the operation of
`the accused product(s), and (3) summary, annual sales
`information for the accused product(s) for the two years
`preceding the filing of the Complaint, unless the parties agree
`to some other timeframe.
`
`9 weeks after CMC
`
`Parties exchange claim terms for construction.
`
`11 weeks after CMC
`
`Parties exchange proposed claim constructions.
`
`12 weeks after CMC
`
`Parties disclose extrinsic evidence. The parties shall disclose
`any extrinsic evidence, including the identity of any expert
`witness they may rely upon with respect to claim construction
`or indefiniteness. With respect to any expert identified, the
`parties shall identify the scope of the topics for the witness’s
`
`
`
` 6
`
` The parties may amend preliminary infringement contentions and preliminary invalidity contentions without leave
`of court so long as counsel certifies that it undertook reasonable efforts to prepare its preliminary contentions and
`the amendment is based on material identified after those preliminary contentions were served, and should do so
`seasonably upon identifying any such material. Any amendment to add patent claims requires leave of court so that
`the Court can address any scheduling issues.
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`expected testimony.7 With respect to items of extrinsic
`evidence, the parties shall identify each such item by
`production number or produce a copy of any such item if not
`previously produced.
`
`Deadline to meet and confer to narrow terms in dispute and
`exchange revised list of terms/constructions.
`
`Plaintiff files Opening claim construction brief, including any
`arguments that any claim terms are not indefinite.
`
`13 weeks after CMC
`
`14 weeks after CMC
`
`17 weeks after CMC
`
`Defendant files Responsive claim construction brief.
`
`19 weeks after CMC
`
`Plaintiff files Reply claim construction brief.
`
`21 weeks after CMC
`
`Defendant files a Sur-Reply claim construction brief.
`
`3 business days after
`submission of sur-reply
`
`22 weeks after CMC (but
`at least 1 week before
`Markman hearing)
`
`23 weeks after CMC (or as
`soon as practicable)
`
`Parties submit Joint Claim Construction Statement.
`
`See General Issues Note #8 regarding providing copies of the
`briefing to the Court and the technical adviser (if appointed).
`
`Parties submit optional technical tutorials to the Court and
`technical adviser (if appointed).8
`
`Markman Hearing at [9:00 a.m. or 1:30 p.m.]
`
`1 business day after
`Markman hearing
`
`Fact Discovery opens; deadline to serve Initial Disclosures per
`Rule 26(a).
`
`6 weeks after Markman
`hearing
`
`8 weeks after Markman
`hearing
`
`Deadline to add parties.
`
`Deadline to serve Final Infringement and Invalidity
`Contentions. After this date, leave of Court is required for
`any amendment to Infringement or Invalidity contentions.
`This deadline does not relieve the Parties of their obligation to
`seasonably amend if new information is identified after initial
`contentions.
`
`
`7 Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by the other
`party.
`8 The parties should contact the law clerk to request a Box link so that the party can directly upload the file to the
`Court’s Box account.
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`16 weeks after Markman
`hearing
`
`Deadline to amend pleadings. A motion is not required unless
`the amendment adds patents or patent claims. (Note: This
`includes amendments in response to a 12(c) motion.)
`
`26 weeks after Markman
`
`30 weeks after Markman
`hearing
`
`31 weeks after Markman
`hearing
`
`35 weeks after Markman
`hearing
`
`38 weeks after Markman
`hearing
`
`39 weeks after Markman
`hearing
`
`40 weeks after Markman
`hearing
`
`Deadline for the first of two meet and confers to discuss
`significantly narrowing the number of claims asserted and
`prior art references at issue. Unless the parties agree to the
`narrowing, they are ordered to contact the Court’s Law Clerk
`to arrange a teleconference with the Court to resolve the
`disputed issues.
`
`Close of Fact Discovery.
`
`Opening Expert Reports.
`
`Rebuttal Expert Reports.
`
`Close of Expert Discovery.
`
`Deadline for the second of two meet and confer to discuss
`narrowing the number of claims asserted and prior art
`references at issue to triable limits. To the extent it helps the
`parties determine these limits, the parties are encouraged to
`contact the Court’s Law Clerk for an estimate of the amount
`of trial time anticipated per side. The parties shall file a Joint
`Report within 5 business days regarding the results of the
`meet and confer.
`
`Dispositive motion deadline and Daubert motion deadline.
`
`See General Issues Note #8 regarding providing copies of the
`briefing to the Court and the technical adviser (if appointed).
`
`42 weeks after Markman
`hearing
`
`Serve Pretrial Disclosures (jury instructions, exhibits lists,
`witness lists, discovery and deposition designations).
`
`44 weeks after Markman
`hearing
`
`Serve objections to pretrial disclosures/rebuttal disclosures.
`
`45 weeks after Markman
`hearing
`
`Serve objections to rebuttal disclosures and File Motions in
`limine.
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`46 weeks after Markman
`hearing
`
`File Joint Pretrial Order and Pretrial Submissions (jury
`instructions, exhibits lists, witness lists, discovery and
`deposition designations); file oppositions to motions in limine
`
`47 weeks after Markman
`hearing
`
`File Notice of Request for Daily Transcript or Real Time
`Reporting. If a daily transcript or real time reporting of court
`proceedings is requested for trial, the party or parties making
`said request shall file a notice with the Court and e-mail the
`Court Reporter, Kristie Davis at kmdaviscsr@yahoo.com
`
`
`Deadline to meet and confer regarding remaining objections
`and disputes on motions in limine.
`
`3 business days before
`Final Pretrial Conference.
`
`File joint notice identifying remaining objections to pretrial
`disclosures and disputes on motions in limine.
`
`49 weeks after Markman
`hearing (or as soon as
`practicable)
`
`52 weeks after Markman
`hearing (or as soon as
`practicable)9
`
`
`
`Final Pretrial Conference. The Court expects to set this date
`at the conclusion of the Markman Hearing.
`
`Jury Selection/Trial. The Court expects to set these dates at
`the conclusion of the Markman Hearing.
`
`
`9 If the actual trial date materially differs from the Court’s default schedule, the Court will consider reasonable
`amendments to the case schedule post-Markman that are consistent with the Court’s default deadlines in light of the
`actual trial date.
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