Case 6:21-cv-00263-ADA Document 32 Filed 10/08/21 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`STANDING ORDER GOVERNING PROCEEDINGS – PATENT CASES
`
`This Order shall govern proceedings in all patent cases pending before the undersigned and the
`following deadlines shall apply.1
`
`1. Patent cases shall be set for a Rule 16 Case Management Conference (CMC) in
`accordance with the Court’s Standing Order Regarding Notice of Readiness in Patent
`Cases.
`
`2. 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.
`
`3. Two weeks after the CMC. The Parties shall submit an agreed Scheduling Order that
`generally tracks the exemplary schedule attached as Exhibit A to this Order, which the
`Court anticipates will be suitable for most cases. If the parties cannot agree, the parties
`shall submit a Joint Motion for entry of Scheduling 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. 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).2
`
`
`1 This OGP will be effective upon entry in all patent cases pending before the undersigned. If there are
`conflicts between this OGP and prior versions in existing cases that the parties are unable to resolve, they
`are encouraged to contact the Court for guidance via email to the Court’s law clerk.
`2 To the extent it may promote early resolution, the Court encourages the parties to exchange license and
`sales information, but any such exchange is optional during the pre-Markman phase of the case.
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`DISCOVERY
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`Except with regard to venue, jurisdictional, and claim construction-related discovery, all other
`discovery shall be 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.
`
`Following the Markman hearing, the following discovery limits will apply. The Court will
`consider reasonable requests to adjust these limits should circumstances warrant.
`
`1. Interrogatories: 30 per side3
`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 report4
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`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 the Court to discuss their respective positions.
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`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 to summarize the dispute and the parties’ respective positions. When contacting the
`law clerks for discovery or procedural disputes, the following procedures shall apply.
`
`If the parties are at an impasse after lead counsel have met and conferred, the requesting
`party shall email a summary of the issue(s) and specific relief requested to opposing counsel.
`The email shall not exceed 500 words and shall include all counsel of record. The responding
`party shall have three business days thereafter to provide an email response, also not to exceed
`500 words. In situations where multiple items are at issue in the dispute (such as responses to
`
`3 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 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.
`4 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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`interrogatories or categories of document production), the Court encourages the parties to
`provide their submission in a table format (also not more than 500 words per side), which
`identifies the disputed issues and specific relief requested.
`
`Once the opposing party provides its response, the requesting party shall email the
`responsible law clerk (or the following email address if the assigned law clerk is not known:
`TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov) a combined email with the summary
`positions from both sides. Thereafter, the Court will provide guidance to the parties regarding
`the dispute, or arrange a telephonic hearing if the Court determines that additional argument
`would be of benefit.
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`PROTECTIVE ORDER
`
`Pending entry of the final Protective Order, the Court issues the following interim Protective
`Order to govern the disclosure of confidential information:
`
`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 OGP shall keep it confidential and use it only for
`purposes of litigating the case.
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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 additional terms to be construed, depending on the
`complexity and number of terms, the Court may split the Markman hearing into multiple
`hearings.
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`The presumed limits based on the number of patents-in-suit are as follows:
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`Limits for Number of Claim Terms to be Construed
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`1-2 Patents
`8 terms
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`3-5 Patents
`10 terms
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`More than 5 Patents
`12 terms
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`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.5 These page limits
`shall also apply collectively for coordinated and 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 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:
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`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.
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`Page Limits for Markman Briefs
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`1-2 Patents
`20 pages
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`3-5 Patents
`30 pages
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`20 pages
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`30 pages
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`Brief
`Opening
`(Defendant)
`
`Response
`(Plaintiff)
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`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
`
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`5 This OGP version shall apply retroactively to the Markman briefing in patent cases that are at least thirty
`(30) days before the filing of the opening Markman brief.
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`Reply
`(Defendant)
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`Sur-Reply
`(Plaintiff)
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`
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`10 pages
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`15 pages
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`10 pages
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`15 pages
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`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
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`Technology Tutorials and Conduct of the Markman Hearing
`
`Technology tutorials are optional, especially in cases where a technical advisor has been
`appointed. If the parties choose to submit one, the tutorial should be in electronic form, with
`voiceovers, and submitted at least 10 days 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. The tutorial will not be part of
`the record and the 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. The Court will provide preliminary constructions to the parties ahead of the Markman
`hearing. As a general rule, the party opposing the Court’s preliminary construction shall go first.
`If both parties oppose the Court’s preliminary construction, the Plaintiff shall typically go first.
`
`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 when such interaction might help
`streamline the case.
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`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. The parties should also
`be aware that the Court’s voicemail is not checked regularly so email is the preferred contact
`method and voicemails are not recommended.
`
`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.
`
`4. Speaking objections during depositions are improper. Objections during depositions shall be
`stated concisely and in a nonargumentative and nonsuggestive manner. Examples of
`permissible objections include: “Objection, leading,” “Objection, compound,” “Objection,
`vague.” Other than to evaluate privilege issues, counsel should not confer with a witness
`while a question is pending. Counsel may confer with witnesses during breaks in a
`deposition without waiving any otherwise applicable privilege.
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`5. 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.
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`6. With regard to any Motion to Transfer, the following page limits and briefing schedule shall
`apply:
`
`a. Opening – 15 pages
`b. Response – 15 pages, due 14 days after the Opening brief
`c. Reply – 5 pages, due 14 days after the Response brief
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`7. 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’s law clerk.
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`8. The Court does not have a limit on the number of motions for summary judgment (MSJs),
`Daubert motions, or Motions in limine (MIL). However, absent leave of Court, the
`cumulative page limit for Opening Briefs for all MSJs is 40 pages per side, for all Daubert
`motions is 40 pages per side, and for all MILs is 15 pages per side. Responsive MSJ,
`Daubert, and MIL briefs are limited to the pages utilized in opening briefs or by the local
`rules, whichever is greater. Reply brief page limits shall be governed by the local rules.
`
`9. For Markman briefs,6 summary judgment motions, and Daubert motions, the parties shall
`jointly deliver to Chambers one paper copy printed double-sided of the Opening, Response,
`and Reply briefs, omitting attachments, at least 10 days before the hearing. Absent
`agreement to the contrary, the Plaintiff shall be responsible for delivering a combined set of
`paper copies to chambers. Each party shall also provide an electronic copy of the briefs,
`exhibits, and the optional technology tutorial via USB drive. For Markman briefs, the parties
`should also include one paper copy of all patents-in-suit and the Joint Claim Construction
`Statement. To the extent the Court appoints a technical adviser, each party shall deliver the
`same to the technical adviser, also 10 days before the hearing.
`
`10. When filing the Joint Claim Construction Statement or proposed Protective Order, the parties
`shall also email the law clerk a Word version of the filed documents.
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`11. For all non-dispositive motions, the parties shall submit a proposed Order. The proposed
`Order shall omit the word “Proposed” from the title.
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`
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`6 But if the Court appoints a technical adviser for claim construction, the parties do not need to provide a
`copy of the Markman briefs to the Court.
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`12. Unless the Court indicates otherwise, the following Zoom information shall be used for all
`non-private hearings. The public is allowed to attend non-private hearings.
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`https://txwd-uscourts.zoomgov.com/j/16057076711?pwd=WHljN0h3Yk03K3JLUTZ2a0tTMitPZz09
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`Meeting ID: 160 5707 6711
`Password: 873559
`One tap mobile: +16692545252,,16057076711#,,1#,873559#
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`
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`SIGNED this 8th day of October, 2021.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`APPENDIX A – EXEMPLARY SCHEDULE
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`Deadline
`
`Item
`
`7 days before CMC
`
`2 weeks after CMC
`
`7 weeks after CMC
`
`Plaintiff serves preliminary7 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.
`
`The Parties shall submit an agreed Scheduling Order. If the
`parties cannot agree, the parties shall submit a separate Joint
`Motion for entry of Scheduling 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.
`
`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, and (2) technical documents, including
`software where applicable, sufficient to show the operation of
`the accused product(s).
`
`9 weeks after CMC
`
`Parties exchange claim terms for construction.
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`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
`
`
`7 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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`or indefiniteness. With respect to any expert identified, the
`parties shall identify the scope of the topics for the witness’s
`expected testimony.8 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.
`
`Defendant files Opening claim construction brief, including
`any arguments that any claim terms are indefinite.
`
`13 weeks after CMC
`
`14 weeks after CMC
`
`17 weeks after CMC
`
`Plaintiff files Responsive claim construction brief.
`
`19 weeks after CMC
`
`Defendant files Reply claim construction brief.
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`21 weeks after CMC
`
`Plaintiff files a Sur-Reply claim construction brief.
`
`3 business days after
`submission of sur-reply
`
`22 weeks after CMC (but
`at least 10 days before
`Markman hearing)
`
`23 weeks after CMC (or as
`soon as practicable)
`
`Parties submit Joint Claim Construction Statement.
`
`See General Issues Note #9 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).9
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`Markman Hearing at 9:00 a.m. This date is a placeholder and
`the Court may adjust this date as the Markman hearing
`approaches.
`
`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
`
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`8 Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by
`the other party.
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`seasonably amend if new information is identified after initial
`contentions.
`
`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 confers 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 #9 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.
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`45 weeks after Markman
`hearing
`
`Serve objections to rebuttal disclosures; file Motions in
`limine.
`
`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
`
`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.
`
`Parties email the Court’s law clerk to confirm pretrial and trial
`dates
`File joint notice identifying remaining objections to pretrial
`disclosures and disputes on motions in limine.
`
`Final Pretrial Conference.
`
`Jury Selection/Trial.
`
`47 weeks after Markman
`hearing
`
`8 weeks before trial
`
`3 business days before
`Final Pretrial Conference.
`
`49 weeks after Markman
`hearing (or as soon as
`practicable)
`
`52 weeks after Markman
`hearing (or as soon as
`practicable)10
`
`
`
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`10 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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