FILED
January 23, 2024
CLERK, U.S. DISTRICT COURT
WESTERN DISTRICT OF TEXAS
IN THE UNITED STATES DISTRICT COURT J. Galindo-Beaver
BY: ________________________________
FOR THE WESTERN DISTRICT OF TEXAS DEPUTY
WACO DIVISION
STANDING ORDER GOVERNING PROCEEDINGS (OGP) 4.4—PATENT CASES
This OGP governs proceedings in all patent cases pending before the undersigned or Judge
Derek T. Gilliland and takes effect upon entry in all patent cases, except where noted. If there are
conflicts between this OGP and prior versions in existing cases that the parties are unable to
resolve, the parties are encouraged to contact the Court for guidance via email to the Court’s law
clerk.
Parties should generally email any inquiries to the Court’s law clerk. The Court’s voicemail is
not checked regularly. Email is the preferred contact method.
Parties should generally use the following email address that includes the Court’s law clerks for
both Judge Albright and Judge Gilliland:
TXWDml_LawClerks_WA_JudgeAlbright&
[email protected].
Messages directed only to Judge Albright’s law clerks may be sent to:
[email protected].
Messages directed only to Judge Gilliland’s law clerks may be sent to:
[email protected].
I. NOTICE OF READINESS 1
In all patent cases pending before the undersigned or Judge Gilliland, the parties are directed to
jointly file the Case Readiness Status Report (“CRSR”) in the format attached as Appendix B:
(a) within 7 days after the Defendant (or at least one Defendant among a group of related
Defendants sued together) has responded to the initial pleadings in cases where there are no
CRSR Related Cases, or (b) when there are CRSR Related Cases, within 7 days after the last
Defendant (or last Defendant group when at least one Defendant among the group has
responded) among the CRSR Related Cases has responded to the initial pleadings. The CRSR
shall be filed in each case and identify all other CRSR Related Cases. For this Order, cases shall
be considered CRSR Related Cases when they meet both criteria: (1) the cases are filed within
30 days after the first case is filed, and (2) the cases share at least one common asserted patent.
The parties shall meet and confer before jointly filing the CRSR. Plaintiff shall have
responsibility for filing the CRSR on time. If the parties have any pre-Markman issues needing
resolution, the parties shall email the Court a joint submission of the parties’ positions after filing
the CRSR so the Court can consider whether to hold a hearing to resolve these issues. If the
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This supersedes the March 7, 2022 Standing Order Regarding Notice of Readiness for Patent Cases.
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parties do not have any pre-Markman issues needing resolution, then the parties need not email
the CRSR to the Court.
The Case Management Conference (“CMC”) shall be deemed to occur 14 days after the filing
date of the CRSR. If the CRSRs in CRSR Related Cases are not all submitted on the same date,
the CMC shall be deemed to occur 14 days after the last CRSR in those CRSR Related Cases is
filed. The Court intends to coordinate the CRSR Related Cases on the same schedule with a
single Markman hearing, so the parties should plan accordingly. In all cases, the Markman
hearing shall be initially scheduled for 23 weeks after the CMC and should be included in the
parties’ proposed Scheduling Order in accordance with this Order.
II. GENERAL DEADLINES
The following deadlines apply:
1. Patent cases shall be set for a Rule 16 CMC in accordance with the preceding section.
2. Not later than 7 days before the CMC. The plaintiff shall serve 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 suit.
3. Two weeks after the CMC. The parties shall file a motion to enter an agreed Scheduling
Order that generally tracks the exemplary schedule attached as Exhibit A to this OGP,
which should suit most cases. If the parties cannot agree, the parties shall submit a joint
motion for entry of a Scheduling Order briefly setting forth their scheduling
disagreement. Absent agreement of the parties, the plaintiff shall be responsible for the
timely submission of this and other joint filings. When filing any Scheduling Order, the
parties shall also jointly send an editable copy to the Court’s law clerk.
4. Seven weeks after the CMC. 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
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documents, including software where applicable, sufficient to show the operation of the
accused product(s). 2
III. GENERAL DISCOVERY LIMITS
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 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 3
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 4
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. 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 in accordance with the
procedures below, to discuss their respective positions.
IV. DISCOVERY DISPUTES
Standing Referral. Under Rule 1 of the Local Rules for the Assignment of Duties to United
States Magistrate Judges, Appendix C of the Local Court Rules of the United States District
Court for the Western District of Texas, discovery disputes in patent cases pending before the
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.
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. If the Court consolidates related cases for pretrial
purposes, with regard to calculating limits imposed by this OGP, 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.
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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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undersigned are referred to United States Magistrate Judge Derek T. Gilliland for a
determination under 28 U.S.C. § 636(b)(1)(A).
Procedure. A party may not file a Motion to Compel discovery unless: (1) lead counsel with
decision making authority 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. 5 When contacting the Court’s law clerk for discovery or procedural
disputes, the following procedures shall apply.
If the parties remain 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 all counsel of record.
The summary of the issue shall not exceed 500 words for one issue or a combined 1,000 words
for multiple issues. The responding party has 3 business days 6 thereafter to provide an email
response, also not to exceed 500 words for one issue or a combined 1,000 words for multiple
issues. The specific relief requested should propose the exact language to be issued in a court
order for each part of every disputed issue. The specific relief requested does not count toward
the word limits. The Court encourages the parties to provide their submission in a Word
document in the following table format, which clearly identifies the disputed issues and specific
relief requested.
Example:
Issue Requesting Party’s Position Responding Party’s Position
RFP 1: Responding Party didn’t produce We found no sales records of the
All sale anything. Responding Party keeps Product in the sales database.
records of its sales records in a sales database.
the Product.
Relief: Order that “Responding Relief: Find that “no documents
Party must produce a copy of the responsive to RFP 5 exist” and deny
sales database within 7 days.” Requesting Party’s relief.
ROG 5: Responding Party only identified a We identified the relevant employees.
Identify all subset of the employees. The other employees are not relevant,
employees and it is too burdensome to identify
who worked Relief: Order that “Responding every employee.
on the Party is compelled to fully respond
Product. to ROG 5 by identifying the names Relief: Order that “Responding Party
and locations of the remaining need not identify any other employees in
response to ROG 5.”
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The procedure outlined below is also the Court’s preferred mechanism for handling disputes regarding
procedural matters such as extensions of time, excess pages, narrowing claims and prior art, amending
invalidity and infringement contentions, etc. If the parties are unsure about whether a particular dispute
should be handled by motion or discovery dispute procedure, they should contact the Court's clerks.
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Business days exclude weekends and federal holidays.
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employees who worked on Product
by [date].”
Once the opposing party provides its response, the requesting party shall email the summaries of
the issues to the Court’s law clerks for both Judge Albright and Judge Gilliland with opposing
counsel copied. If a hearing is requested, the parties shall indicate in the email whether any
confidential information will be presented. Thereafter, the Court will provide guidance to the
parties regarding the dispute or arrange a Zoom or in-person hearing.
Written Order. 7 Within 7 days of the discovery hearing, the parties shall email a joint proposed
order to the Court’s law clerk that includes the parties’ positions from their dispute chart, the
parties’ requested relief, and the parties’ understanding of the Court’s ruling so that the
arguments and outcome can be docketed. Parties shall send an editable version of the proposed
order to the Court’s law clerk with any disputed language in red and blue text. Failure to provide
a proposed written order for the docket results in waiver of the dispute for appeal.
V. VENUE & JURISDICTIONAL DISCOVERY
The Court hereby 8 establishes the following presumptive 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. If a 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’s law clerk 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 transfer or jurisdictional motion.
VI. MOTIONS FOR TRANSFER
This section applies to all cases filed on or after March 7, 2022. Otherwise, the Second Amended
Standing Order Regarding Motions for Inter-District Transfer controls earlier-filed cases.
A motion to transfer anywhere shall be filed within 3 weeks after the CMC or within 8 weeks of
receiving or waiving service of the complaint, whichever is later. Thereafter, a movant must
show good cause for any delay and seek leave of court. The deadline for plaintiff’s response is 2
weeks after the completion of venue or jurisdictional discovery. The deadline for Defendant’s
reply is 2 weeks after the filing of the response.
7
This supersedes the June 17, 2021 Standing Order for Discovery Hearings in Patent Cases.
8
This supersedes the June 8, 2021 Amended Standing Order Regarding Venue and Jurisdictional
Discovery Limits for Patent Cases.
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The following page limits and briefing schedule apply to motions to transfer:
1. Opening – 15 pages
2. Response – 15 pages, due 14 days after the completion of venue or jurisdictional
discovery, if such discovery is conducted; otherwise, 14 days after the Opening brief
3. Reply – 5 pages, due 14 days after the Response brief
All parties who have filed a motion to transfer shall provide the Court with a status report
indicating whether the motion has been fully briefed at each of the following times: 1) when the
motion to transfer becomes ready for resolution,; 2) at 4 weeks before the Markman hearing date
if the motion to transfer remains unripe for resolution; and 3) if there are multiple Markman
hearings, the status report is due 6 weeks before the first scheduled Markman hearing. In
addition, if by 1 week before the Markman hearing the Court has not ruled on any pending
motion to transfer, the moving party is directed to email the Court’s law clerk (and the technical
advisor, when appointed), and indicate that the motion to transfer is pending.
If a motion to transfer remains pending, the Court will either promptly resolve the pending
motion before the Markman hearing, or postpone the Markman hearing. Whenever a Markman
hearing is postponed pursuant to this OGP (e.g., because the transfer motion has not yet ripened
or only recently ripened), Fact Discovery will begin one day after the originally scheduled
Markman hearing date.
VII. MEET AND CONFER REQUIREMENT FOR
EARLY MOTIONS TO DISMISS INDIRECT AND WILLFUL INFRINGEMENT
Any party seeking to dismiss claims of indirect or willful infringement before fact discovery
must first meet and confer with the opposing party to discuss dismissing those allegations
without prejudice, with leave to re-plead those allegations with specificity if supported by a good
faith basis under Rule 11. Under this agreement, the patent owner may re-plead those allegations
within three months after fact discovery opens, and the parties agree to permit fact discovery on
indirect and willful infringement during those three months. The party moving to dismiss must
attach a certification of compliance with this OGP to its motion to dismiss.
An agreement to dismiss under this section shall be filed as a joint notice instead of as a motion.
VIII. INTERIM PROTECTIVE ORDER
The Court provides a Model Protective Order on its website. 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
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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.
IX. CLAIM CONSTRUCTION
Limits for Number of Claim Terms to be Construed
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.
The presumed limits based on the number of patents-in-suit are as follows:
1-2 Patents 3-5 Patents More than 5 Patents
8 terms 10 terms 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.
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. 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. The Court has familiarity with the law of claim
construction and encourages the parties to forego lengthy recitations of legal authorities and to
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:
1. 10,000,000 Patent, Claim 1, Term 1
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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
If 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.
Brief 1-2 Patents 3-5 Patents More than 5 Patents
Opening 20 pages 30 pages 30 pages, plus 5
(Defendant) additional pages for
each patent over 5 up
to a maximum of 45
pages
Response 20 pages 30 pages 30 pages, plus 5
(Plaintiff) additional pages for
each patent over 5 up
to a maximum of 45
pages
Reply 10 pages 15 pages 15 pages, plus 2
(Defendant) additional pages for
each patent over 5 up
to a maximum of 21
pages
Sur-Reply 10 pages 15 pages 15 pages, plus 2
(Plaintiff) additional 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 and email an
editable copy to the Court’s law clerks.
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 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.
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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.
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.
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.
X. GENERAL ISSUES
1. The Court will entertain reasonable requests to streamline the case schedule and discovery.
The Parties should contact the Court’s law clerk when a change might help streamline the
case.
2. The Court is generally willing to extend the response to the Complaint up to 45 days if
agreed by the parties. Extensions beyond 45 days from the original answer date are
disfavored and require a motion.
3. 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.
4. Within 10 days of any new changes relevant to AO 120 (Report on the Filing or
Determination of an Action Regarding a Patent or Trademark), the Plaintiff must update the
form with any new changes to the case such as amended complaints or new claims.
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 2 weeks of the
filing of the IPR.
6. After the trial date is set, the Court will not move the trial date except in extreme situations.
If a party believes that the circumstances warrant continuing the trial date, the parties are
directed to contact the Court’s law clerk.
7. Appendix C, Order on Motions in Limine (MILs), shall apply equally to all parties. In
addition to the standard MILs, each party will be permitted to propose and argue (if opposed)
up to five (5) of its own MILs at the Pretrial Conference. MILs outside these limits will not
be considered. MILs that are multifarious so as to exceed the above limitations will also not
be considered. MILs that simply restate the rules of evidence or other legal principles or that are
more appropriately motions for summary judgment or Daubert motions are improper.
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8. The Court does not limit the number of motions for summary judgment (MSJs) or Daubert
motions 9 a party may file. 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. Each responsive MSJ, Daubert, and MIL brief is
limited to the pages utilized in the opening brief or by the local rules, whichever is greater;
and the cumulative pages for responsive briefs shall be no more than cumulative pages
utilized in the opening briefs. Reply brief page limits shall be governed by the local rules, but
in no event shall the cumulative pages of reply briefs exceed 20 pages per side for all MSJs,
20 pages per side for all Daubert motions, and 10 pages for all MILs.
9. The Court no longer requires physical copies of Markman briefs, summary judgment
motions, and Daubert motions. Instead, the parties shall jointly contact the Court’s law clerk,
at least ten days before the hearing, for a Box link to provide an electronic copy of the
briefs, 10 exhibits, and the optional technology tutorial. 11 Absent agreement to the contrary,
the plaintiff shall be responsible for providing the electronic copies via Box. For Markman
briefs, the parties should also include a copy of all patents-in-suit and an editable copy of the
Joint Claim Construction Statement. If the Court appoints a technical advisor, each party
shall deliver the same to the technical advisor on a USB drive, also 10 days before the
hearing.
10. When filing the Joint Claim Construction Statement, proposed Protective Order, or proposed
Scheduling Order, the parties shall also email the Court’s law clerk a Word version of the
filed documents.
11. For all non-dispositive motions, the parties shall submit a proposed Order. The proposed
Order shall omit the word “Proposed” from the title.
12. For non-private remote hearings in front of Judge Albright, the public is allowed to attend via
the call-in information below. However, the public shall not attempt to access video of those
hearings and anyone found not to be in compliance is subject to sanctions by the Court.
+16692545252,,1613131172#,,,,*120804# US (San Jose)
+16468287666,,1613131172#,,,,*120804# US (New York)
13. Any party who intends to present confidential information in a remote hearing shall email
and notify the Court’s law clerk to request a private Zoom setup that will not be publicly
broadcasted.
14. When citing cases or exhibits in a motion, parties shall pin cite the relied-upon section of a
case or exhibit. For any motion referencing an expert report (e.g., motions to strike, Daubert
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This includes any motion filed after opening expert reports that seeks to strike or preclude the use of any
part of an expert report for any reason, including procedural reasons.
10
But if the Court appoints a technical advisor for claim construction, the parties should not provide a
copy of the Markman briefs to the Court.
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The Court can no longer receive USB drives due to security concerns, but the technical advisors can.
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motions, and summary judgment motions), the Court requires full copies of the expert report
attached as an exhibit. The Court encourages parties to highlight and/or annotate the relied-
upon sections of exhibits or expert reports (e.g., patents, transcripts, contracts) to facilitate
the Court’s analysis of the motion. A supporting declaration should identify if any exhibit is
highlighted or annotated.
15. Parties shall promptly notify the Court if they reach a settlement in a case and request to stay
any deadlines.
16. When filing a patent case, the Plaintiff shall file a “Notice of Related Cases” on the day of
filing the patent case. For the Notice of Related Cases, cases shall be considered “related”
when they share at least one common asserted patent. 12 The Notice of Related Cases shall
indicate the case caption, case number, and presiding Judge of any related case.
17. A pleading, motion, or other submission shall be typed or printed in 12-point or larger font
(including footnotes), double-spaced, on paper sized 8½” x 11” with one-inch margins on all
sides and shall be endorsed with the style of the case and the descriptive name of the
document. Headings, footnotes, and quotations more than two lines long may be single-
spaced.
18. With respect to calculating page limits for motions not otherwise addressed in this Order,
such that Local Rule CV-7 applies, at least the following are examples of motions the Court
considers to be “case management motions” where the 10-page limit shall apply: Motions to
Stay, Motions for Continuance, and Motions to Amend Pleadings, Contentions, or
Scheduling Orders.
XI. TRIAL & POST-TRIAL ISSUES
1. Preliminary and Final Jury Instructions with disputed language must include citations to prior
jury instructions given by this Court. Parties shall send an editable version of the proposed
instructions to the Court’s law clerk with the disputed language in red and blue text.
Instructions should exactly track the language of prior instructions to the extent possible.
Language from the Court’s most recent Jury Instructions is preferred.
2. Parties shall file a joint proposed final judgement within 14 days of a jury verdict. If one
party disputes the language of the order, then that party shall send an editable version of the
proposed order to the Court’s law clerk with the disputed language in red and blue text. The
Court discourages the parties from providing extensive substantive argument in the editable
version of the proposed judgment.
3. On the same day that post-trial briefing is completed, the parties shall email the Court’s law
clerks with a list of the pending motions and request a hearing, if desired.
12
The CRSR and Notice of Related Cases use different definitions.
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4. Prior to entering an order regarding post-trial bonds, parties are directed to reach out to the
District Clerks Office to obtain specific information needed to complete the order. The Office
can be reached at
[email protected] or 254-750-1501.
SIGNED this 23rd day of January, 2024.
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE
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XII. APPENDIX A – EXEMPLARY SCHEDULE
Deadline Item
8 weeks after receiving or Deadline to file a motion to transfer. After this deadline,
waiving service of movants must seek leave of Court and show good cause for
complaint or 3 weeks after the delay.
the CMC, whichever is
later.
7 days before CMC Plaintiff serves preliminary 13 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 The Parties shall file a motion to enter 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.
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, and (2) technical documents, including
software where applicable, sufficient to show the operation of
the accused product(s).
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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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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
expected testimony. 14 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 CMC Deadline to meet and confer to narrow terms in dispute and
exchange revised list of terms/constructions.
14 weeks after CMC Defendant files Opening claim construction brief, including
any arguments that any claim terms are indefinite.
17 weeks after CMC Plaintiff files Responsive claim construction brief.
19 weeks after CMC Defendant files Reply claim construction brief.
19 weeks after CMC Parties to jointly email the law clerks (see OGP at 1) to
confirm their Markman date and to notify if any venue or
jurisdictional motions remain unripe for resolution.
21 weeks after CMC Plaintiff files a Sur-Reply claim construction brief.
3 business days after Parties submit Joint Claim Construction Statement and email
submission of sur-reply the law clerks an editable copy.
See General Issues Note #9 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).
22 weeks after CMC (but Parties submit optional technical tutorials to the Court and
at least 10 days before technical advisor (if appointed).
Markman hearing)
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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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23 weeks after CMC (or as Markman Hearing at 9:00 a.m. This date is a placeholder and
soon as practicable) 15 the Court may adjust this date as the Markman hearing
approaches.
1 business day after Fact Discovery opens; deadline to serve Initial Disclosures per
Markman hearing Rule 26(a).
6 weeks after Markman Deadline to add parties.
hearing
8 weeks after Markman Deadline to serve Final Infringement and Invalidity
hearing 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.
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’s law clerk 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
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All deadlines hereafter follow the original Markman hearing date and do not change if the Court delays
the Markman hearing.
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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.
40 weeks after Markman Dispositive motion deadline and Daubert motion deadline.
hearing
See General Issues Note #9 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).
Deadline for parties desiring to consent to trial before the
magistrate judge to submit Form AO 85, “Notice, Consent,
And Reference Of A Civil Action To A Magistrate Judge,”
available at https://www.uscourts.gov/forms/civil-
forms/notice-consent-and-reference-civil-action-magistrate-
judge.
42 weeks after Markman Serve Pretrial Disclosures (jury instructions, exhibits lists,
hearing witness lists, 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, deposition
designations); file oppositions to motions in limine
From this date onwards, the parties are obligated to notify the
Court of any changes to the asserted patents or claims. Such
notification shall be filed on the docket within seven (7) days
of the change and shall include a complete listing of all
asserted patents and claims. If a change to the asserted patents
or claims requires leave of court (for example, if a party is
moving for leave to assert additional claims), notification shall
not be required until the Court grants leave, at which point the
notification must be filed within seven (7) days.
47 weeks after Markman File Notice of Request for Daily Transcript or Real Time
hearing 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 email the
Court Reporter, Kristie Davis at
[email protected]
Deadline to file replies to motions in limine.
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48 weeks after Markman Deadline to meet and confer regarding remaining objections
hearing and disputes on motions in limine.
8 weeks before trial Parties to jointly email the Court’s law clerk (See OGP at 1) to
confirm their pretrial conference and trial dates.
3 business days before File joint notice identifying remaining objections to pretrial
Final 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) 16
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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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XIII. APPENDIX B – EXEMPLARY CASE READINESS STATUS REPORT
UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
[Plaintiff],
Plaintiff Case No. 6:21-cv-00000-ADA
v. JURY TRIAL DEMANDED
[Defendant],
Defendant
CASE READINESS STATUS REPORT
Plaintiff [names] and Defendant [name(s)], hereby provide the following status report.
SCHEDULE
A scheduling order [has been proposed and awaits entry by the Court, has been issued by
the Court, or has not yet been filed].
[Indicate if a Markman date has been set, proposed, or not yet proposed.]
[Indicate if a trial date has been set, proposed, or not yet proposed.]
FILING AND EXTENSIONS
Plaintiff’s Complaint was filed on [filing date]. There have been [one/two] extension[s] for
a total of __ days.
RESPONSE TO THE COMPLAINT
[Indicate if/when the Defendant(s) responded to the Complaint, whether it was an Answer
or Motion, and whether any counterclaims were filed other than counterclaims for non-
infringement or invalidity]
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PENDING MOTIONS
[Identify all pending motions]
RELATED CASES IN THIS JUDICIAL DISTRICT
[Identify all related cases in this Judicial District, including any other cases where a
common patent is asserted]
IPR, CBM, AND OTHER PGR FILINGS
[There are no known IPR, CBM, or other PGR filings.] [Or]
[ALT: IPR2021-00000 was filed on ____ and docketed on ____. An institution decision is
expected on or before ___. A Final Written decision is expected on or before _____.]
NUMBER OF ASSERTED PATENTS AND CLAIMS
Plaintiff has asserted [Num Patents] patent[s] and a total of [Num Claims] claims. The
asserted patent(s) are U.S. Patent Nos. ____.
[If a Plaintiff has already served Preliminary Infringement Contentions (“PICs”), note the
date of service. Note: Per the Court’s Order Governing Proceeding, Plaintiff must serve PICs no
later than 7 days before the CMC]
APPOINTMENT OF TECHNICAL ADVISOR
[Indicate if the Parties request, oppose, or defer to the Court on whether to appoint a
technical advisor to the case to assist the Court with claim construction or other technical issues]
MEET AND CONFER STATUS
Plaintiff and Defendant met and conferred. [The Parties have no pre-Markman issues to
raise at the CMC.] or [The Parties identified the following pre-Markman issues to raise at the CMC
[list].]
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Dated: ___________ Respectfully Submitted
/s/
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XIV. APPENDIX C – STANDARD MOTIONS IN LIMINE ORDER
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
PLAINTIFF, §
§
Plaintiff §
§
v. § W-2X-CV-XXX-ADA
§
DEFENDANT, §
§
Defendant §
ORDER ON MOTIONS IN LIMINE
The Court issues this Order sua sponte. To allow for reasonable and relevant limine
practice as part of the Pretrial Conference, the Court imposes the following set of standard
limine rulings to be applied mutually to both parties. In addition to these limine orders, each
party will be permitted to propose and argue (if opposed) up to five (5) of its own motions in
limine at the Pretrial Conference. Limine motions outside these limits will not be considered.
Limine motions that are multifarious so as to exceed the above limitations will also not be
considered. MILs that simply restate the rules of evidence or other legal principles or that are more
appropriately motions for summary judgment or Daubert motions are improper.
It is therefore ORDERED that the Parties, their witnesses, and counsel shall not raise,
discuss, or argue the following before the venire panel or the jury without prior leave of the
Court:
Court MIL No. 1: The parties shall be precluded from introducing evidence,
testimony, or argument regarding pretrial proceedings or issues
including but not limited to discovery disputes or dispositive
motion practice.
Court MIL No. 2: The parties shall be precluded from introducing evidence,
testimony, or argument that raises religious or political beliefs,
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race, ethnicity, gender, national origin, sexual orientation, or
health (including but not limited to vaccination status) of a party,
witness, attorney, or law firm.
Court MIL No. 3: The parties shall be precluded from introducing evidence,
testimony, or argument concerning any party’s overall financial
size, wealth, or executive compensation.
Court MIL No. 4: The parties shall be precluded from introducing evidence,
testimony, or argument regarding prior art that is not disclosed
in a specific combination set forth in any party’s expert report or
invalidity contentions.
Court MIL No. 5: The parties shall be precluded from introducing evidence,
testimony, or argument before the jury that relates only to
equitable defenses or counterclaims (i.e., evidence that does not
also serve another evidentiary purpose relevant to jury issues).
Court MIL No. 6: The parties shall be precluded from introducing evidence,
testimony, or argument concerning the Patent Trial and Appeal
Board, inter partes review, the Smith-Leahy America Invents Act,
or any alternative structure that does not relate directly to an
Article III trial in a district court.
Court MIL No. 7: The parties shall be precluded from introducing evidence,
testimony, or argument suggesting that there is anything legally
improper in filing a patent application or writing patent claims to
cover an adverse party’s product.
Court MIL No. 8: The parties shall be precluded from introducing any
argument, evidence, testimony, insinuation, reference, or
assertion regarding a witness’ choice to testify in his or her native
or chosen language (being any language other than English).
Court MIL No. 9: The parties shall be precluded from introducing evidence,
testimony, or argument referring to any other person or entity
as “greedy,” “corrupt,” “evil,” or “dishonest,” or using any other
pejorative term. The parties shall also be precluded from
introducing evidence, testimony, or argument that characterizes
any other person or entity’s actions as “stealing,” “copying,”
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“misappropriating,” “pirating,” “trespassing,” or any similar
terms.
Court MIL No. 10: The parties shall be precluded from introducing evidence,
testimony, or argument bolstering or disparaging the U.S. Patent
Office, its examiners, or the process for prosecuting patent
applications or granting patents in the United States. This does
not preclude factual evidence as to the operations of the USPTO.
Court MIL No. 11: The parties shall be precluded from introducing evidence,
testimony, or argument referring to any other person or entity in
disparaging ways, such as a “patent troll,” “pirate,” “bounty
hunter,” “bandit,” “playing the lawsuit lottery,” “shell
company,” “shakedown artist,” “patent assertion entity,” or any
such similar terms. Use of the term “non-practicing entity” is
permitted.
Court MIL No. 12: The parties shall be precluded from introducing evidence,
testimony, or argument regarding funding of the litigation or
regarding any comment on attorney-fee compensation including
amounts or structure.
Court MIL No. 13: The parties shall be precluded from introducing evidence,
testimony, or argument regarding either party’s other litigations
or arbitrations, including parallel proceedings in any other court,
tribunal, or forum, including ADR proceedings.
Court MIL No. 14: The parties shall be precluded from introducing evidence,
testimony, or argument regarding the size of the parties’ law firms
or the number of attorneys representing the parties.
Court MIL No. 15: The parties shall be precluded from introducing evidence,
testimony, or argument regarding the fact that testimony or
opinions offered by any expert may have been criticized,
excluded, or found to be unreliable in any other forum.
Court MIL No. 16: The parties shall be precluded from introducing evidence,
testimony, or argument referring to the role or presence in the
courtroom of jury consultants or shadow jurors, or the use of
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focus groups or mock proceedings to assist with trial preparation,
jury selection, or trial.
Court MIL No. 17: The parties shall be precluded from introducing evidence,
testimony, or argument relating to the Court’s Claim
Construction Order other than the Court’s actual adopted
constructions, including the Court’s reasoning or the parties’
agreements.
Court MIL No. 18: The parties shall be precluded from introducing evidence,
testimony, or argument for purposes of non-infringement
comparing the accused product or method to the preferred
embodiments, the specification, or any non-accused product or
method.
Court MIL No. 19: The parties shall be precluded from introducing evidence,
testimony, or argument suggesting that a verdict in one party’s
favor would impact the cost of goods or services or would have
other commercial impacts.
Court MIL No. 20: The parties shall be precluded from introducing evidence,
testimony, or argument suggesting that the Western District of
Texas is an improper or inconvenient venue in which to try this
case.
Court MIL No. 21: The parties shall be precluded from introducing evidence,
testimony, or argument suggesting that the other party had an
affirmative duty to seek opinion of counsel, and/or any inference
that may be drawn as to what the contents of such an opinion
would have been.
Court MIL No. 22: Neither party will ask questions or make statements to invoke a
privileged or protected answer, including any materials that are
privileged, or that have been presented outside of the jury to
establish/prevent a finding of privilege.
Court MIL No. 23: No expert witness may testify to expert opinions outside the
established parameters of her/his expert report, and counsel shall
not raise such an objection for strategic or other non-meritorious
purposes.
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