IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
STANDING ORDER REGARDING MOTIONS UNDER
35 U.S.C. § 101 AND ACCOMPANYING CERTIFICATIONS
IN CASES ASSIGNED TO UNITED STATES DISTRICT JUDGE RODNEY GILSTRAP
WHEREAS, this Court recognizes that claim construction may be appropriate in properly
deciding issues under 35 U.S.C. § 101 in certain cases and such may not be appropriate in other
cases; and
WHEREAS, the Court, in seeking to efficiently manage its docket, believes such
efficiency is enhanced by early input as to the propriety or lack thereof regarding claim
construction prior to consideration of such motions;
NOW, THEREFORE, IT IS ORDERED THAT parties seeking to file pre-Markman
hearing dispositive motions under 35 U.S.C. § 101 (that is: prior to entry of the Court’s claim
construction order) shall include, as a part of such motions, the following certification,
completed and signed as follows and as may be appropriate in such case:
CERTIFICATE OF COMPLIANCE WITH THE COURT’S
35 U.S.C. § 101 MOTION PRACTICE ORDER
_____ The parties agree that prior claim construction is not needed to inform the
Court’s analysis as to patentability.
_____ The parties disagree on whether prior claim construction is not needed to
inform the Court’s analysis as to patentability.
/S/ Lead Counsel for Movant
The meet and confer process required in advance of properly making the above
certification to the Court shall require one-on-one communication. As used herein, the term
“one-on-one” communication shall mean that lead counsel for both sides shall diligently
communicate orally and directly with each other (in person or telephonically) with no others
advising, interjecting, or otherwise participating in such communication. The requirement that
lead counsel meet and confer “one-on-one” is intended to avoid an ineffective meet-and-confer
process and to heighten the level of seriousness and attention devoted to this process. To the
extent such certification reflects disagreement, the parties shall submit a joint letter containing
not more than two (2) pages from each side (four pages total) to the Court within ten (10) days
from the filing of the § 101 motion, setting forth their respective specifics surrounding such
disagreement, including, in particular, any claim terms that the respondent believes need to be
construed, why such is needed, and what intrinsic references support such position. Nothing
included in such joint letter shall bind the parties as to the § 101 motion, future claim
construction, or any other proceeding before the Court.
The Court shall exercise its inherent power to manage its docket by considering the
parties’ positions in this regard as it schedules and takes up such § 101 motions. Nothing herein
shall necessitate advance leave of court to file such § 101 motions; but rather, compliance with
this certification process is required as set forth above.
The clerk shall reject the filing of such pre-Markman motions when this certification
process has not been met. These requirements do not apply to § 101 motions filed after the entry
of a claim construction order.
This Standing Order supplements but does not supersede the Rules of Practice for Cases
before the Eastern District of Texas; however, this order does replace that portion of current
docket control orders which previously required leave of court to file a § 101 motion in advance
of claim construction.
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SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 10th day of November, 2015.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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