⚠ Recovered from a scanned original by OCR — check the official PDF before quoting exact language.
FILED
August 02, 2022
CLERK, U.S. DISTRICT COURT
WESTERN DISTRICT OF TEXAS
IN THE UNITED STATES DISTRICT COURT 8: J.A.
DEPUTY
FOR THE WESTERN DISTRICT OF TEXAS
MIDLAND/ODESSA AND PECOS DIVISIONS
§
§
§
STANDING ORDER GOVERNING PATENT PROCEEDINGS
This Order governs proceedings in all patent cases pending before the undersigned and
takes effect upon entry in all patent cases. The Court may accelerate, extend, eliminate, or modify
the obligations or deadlines set forth herein based on the circumstances of any case, including,
without limitation, the complexity of the case or the number of patents, claims, products, or parties
involved. The Local Rules of this Court shall also apply to these actions, except to the extent they
are inconsistent. The deadlines set forth herein may be modified by Scheduling Order issued in
specific cases.
I. DEADLINES
The parties shall submit a proposed scheduling order to the Court within thirty (30) days
after the Court enters its Order for Scheduling Recommendations. The content of the proposed
scheduling order shall include proposals for all deadlines set out in the form for scheduling order
attached hereto as Exhibit “A.” The parties shall endeavor to agree concerning the contents of the
proposed scheduling order, but if they are unable to do so, each party’s position and the reasons
for the disagreement shall be submitted to the Court. The scheduling proposals of the parties shall
be considered by the Court, but the setting of all dates is within the discretion of the Court. The
parties shall indicate in the proposed order that they have in fact conferred as required by the
Federal Rules of Civil Procedure.
In all cases, the Markman hearing shall be initially scheduled for 23 weeks after the parties
submit their proposed scheduling order to the Court.
Not later than one week before the parties’ proposed scheduling order is due to be filed
with the Court, the plaintiff shall serve their preliminary infringement contentions chart setting
forth where in the accused product(s) each element of the.asserted claim(s) are found. The 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 the suit.
Seven weeks after the parties submit their proposed scheduling order to the Court, the
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 § 112, and (3) an identification of any claims the defendant contends are directed to
ineligible subject matter under § 101. The § 101 contention shall (1) identify the alleged abstract
idea, law of nature, and/or natural phenomenon in each challenged claim; (2) identify each claim
element alleged to be well-understood, routine, and/or conventional; and (3) to the extent not
duplicative of §§ 102/103 prior art contentions, prior art for the contention that claim elements are
well-understood, routine, and/or conventional. The 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).
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 2 weeks of the
filing of the IPR.
Il. DISCOVERY LIMITS
Except regarding 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 it. For example, if discovery outside the United States
is contemplated via the Hague, the Court is inclined to allow such discovery to commence before
the Markman hearing.
Following the Markman hearing, the following discovery limits apply. The Court will
consider reasonable requests to adjust these limits should circumstances warrant.
1. Interrogatories: 30 per side _
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 report
Electronically Stored Information. As a preliminary matter, the Court will not require
general search and production of email or other electronically stored information (“ESI”) related
to email (such as metadata), absent a showing of good cause. Ifa 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.
IM. VENUE & JURISDICTIONAL DISCOVERY
The Court hereby establishes the following limits on discovery related to venue and
jurisdiction: each party is limited to 5 interrogatories, 10 Requests for Production, and 10 hours of
deposition testimony. The time to respond to such discovery requests is reduced to 20 days. Ifa
party believes these limits should be expanded, the party shall meet and confer with opposing
counsel and if an impasse is reached, the requesting party is directed to contact the Court for a
telephonic hearing.
Venue or jurisdictional discovery automatically opens upon the filing of an initial venue or
jurisdictional motion and shall be completed no later than 10 weeks after the filing of such motion.
Parties shall file a notice of venue or jurisdictional discovery if the discovery will delay a response
to a motion to transfer.
IV. CLAIM CONSTRUCTION
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.
Briefing Procedure and Page Limits. The Court will require non-simultaneous Markman
briefing with the following default page limits. When exceptional circumstances warrant, the
Court will consider reasonable requests to adjust these limits.
Unless otherwise agreed to by the parties, the default order of terms in the parties’ briefs
shall be based on the patent number (lowest to highest), the claim number (lowest to highest), and
order of appearance within the lowest number patent and claim.
__. Brief. | =1-2'Patents “| _.3-5 Patents More.than 5 Patents
Opening 20 pages 30 pages 30 pages, plus 5 additional
(Defendant) pages for each patent over 5
up to a maximum of 45 pages
Response 20 pages 30 pages 30 pages, plus 5 additional
(Plaintiff) pages for each patent over 5
up to a maximum of 45 pages
Reply 10 pages 15 pages 15 pages, plus 2 additional
(Defendant) pages for each patent over 5
up to a maximum of 21 pages
Sur-Reply 10 pages 15 pages 15 pages, plus 2 additional
(Plaintiff) pages for each patent over 5
up to a maximum of 21 pages
After briefing concludes, the parties shall file a Joint Claim Construction Statement.
Technology Tutorials and Markman Hearing. Technology tutorials are optional,
especially in cases where a technical advisor has been appointed. If the parties 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 hour 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. Generally, 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.
The Court will provide preliminary constructions to the parties ahead of the Markman
hearing. At the Markman hearing, the Court encourages oral arguments that fine-tune the
preliminary constructions over arguments repeated from the briefs.
It is so ORDERED.
SIGNED and ENTERED ils of August 2022.
Ud ct
DAVID COUNTS
UNITED STATES DISTRICT JUDGE
APPENDIX A - PROPOSED SCHEDULING ORDER
Deadline Item ~- EE:
30 days after the Court enters | The Parties shall file a motion to enter an agreed Scheduling
its Order for Scheduling | Order. If the parties cannot agree, the parties shall submit a
Recommendations separate Joint Motion for entry of Scheduling Order briefly
setting forth their respective positions on items where they
cannot agree.
1 week before the parties’ | Plaintiff serves preliminary infringement contentions in the
proposed scheduling order is | form of a chart setting forth where in the accused product(s)
due to be filed with the Court | 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.
7 weeks after the parties’ | Defendant serves preliminary invalidity contentions in the
proposed scheduling order is | form of (1) a chart setting forth where in the prior art
due to be filed with the Court | 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 the parties’ | Parties exchange claim terms for construction.
proposed scheduling order is
due to be filed with the Court
11 weeks after the parties’ | Parties exchange proposed claim constructions.
proposed scheduling order is
due to be filed with the Court
12 weeks after the parties’ | Parties disclose extrinsic evidence. The parties shall disclose
proposed scheduling order is | any extrinsic evidence, including the identity of any expert
due to be filed with the Court | 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
expected testimony. 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.
13 weeks after the parties’ | Deadline to meet and confer to narrow terms in dispute and
proposed scheduling order is | exchange revised list of terms/constructions.
due to be filed with the Court
14 weeks after the parties’ | Defendant files Opening claim construction brief, including
proposed scheduling order is | any arguments that any claim terms are indefinite.
due to be filed with the Court
17 weeks after the parties’ | Plaintiff files Responsive claim construction brief.
proposed scheduling order is
due to be filed with the Court
19 weeks after the parties’ | Defendant files Reply claim construction brief.
proposed scheduling order is
due to be filed with the Court
21 weeks after the parties’ | Plaintiff files a Sur-Reply claim construction brief.
proposed scheduling order is
due to be filed with the Court
3. business days after | Parties submit Joint Claim Construction Statement.
submission of Plaintiff's Sur-
Reply claim construction brief
22 weeks after the parties’ | Parties submit optional technical tutorials to the Court and
proposed scheduling order is | technical advisor (if appointed).
due to be filed with the Court
23 weeks after the parties’ | Markman Hearing.
proposed scheduling order is
due to be filed with the Court
1 business day after Markman | Fact Discovery opens; deadline to serve Initial Disclosures per
hearing Rule 26(a).
6 weeks after Markman hearing | Deadline to add parties.
8 weeks after Markman hearing | 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
amend if new information is identified after initial
contentions.
16 weeks after Markman | Deadline to amend pleadings. A motion is not required unless
hearing the amendment adds patents or patent claims. (Note: This
includes amendments in response to a 12(c) motion).
26 weeks after Markman 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 to arrange a
teleconference with the Court to resolve the disputed issues.
30 weeks after Markman | Close of Fact Discovery.
hearing
31 weeks after Markman | Opening Expert Reports.
hearing
35 weeks after Markman | Rebuttal Expert Reports.
hearing _
38 weeks after Markman | Close of Expert Discovery.
hearing
39 weeks after Markman | Deadline for the second of two meet and confers to discuss
hearing narrowing the number of claims asserted and prior art
references at issue to triable limits. If it helps the parties
determine these limits, the parties are encouraged to contact
the Court 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.
40 weeks after Markman | Dispositive motion deadline and Daubert motion deadline.
hearing
42 weeks after Markman | Serve Pretrial Disclosures (jury instructions, exhibits lists,
hearing witness lists, discovery and deposition designations).
44 weeks after Markman | Serve objections to pretrial disclosures/rebuttal disclosures.
hearing
45 weeks after Markman | Serve objections to rebuttal disclosures; file motions in limine.
hearing
46 weeks after Markman | File Joint Pretrial Order and Pretrial Submissions (jury
hearing instructions, exhibits lists, witness lists, discovery and
deposition designations); file oppositions to motions in limine
47 weeks after Markman | Deadline to meet and confer regarding remaining objections
hearing and disputes on motions in limine.
8 weeks before trial Parties to contact Court to confirm their pretrial conference
and trial dates.
3 business days before Final | File joint notice identifying remaining objections to pretrial
Pretrial Conference. disclosures and disputes on motions in limine.
49 weeks after Markman | Final Pretrial Conference. Held in person unless otherwise
hearing (or as soon _ as | requested.
practicable)
52 weeks after Markman | Jury Selection/Trial.
hearing (or as soon as
practicable)
