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Judge Albright Issues Another Round of Updated Patent Rules for WDTX

As previously reported, Judge Albright issued standing orders for his patent cases. On March 7, 2022, Judge Albright issued another set of rules applicable to his large portfolio of patent cases in the Western District of Texas, with some modifications to his prior rules.

This round of new orders includes the following:

  • In the “Amended Standing Order Regarding Coronavirus (COVID-19) and Other Court Proceedings,” Judge Albright stated that all non-pretrial conference hearings will default to video conference unless otherwise requested by the parties.

  • Under the “Standing Order Governing Proceedings (OGP) 4.0—Patent Cases,” defendants must serve preliminary invalidity contentions seven weeks after the case management conference, with the below requirements:

    • The contentions must be in chart form identifying where in the prior art references each element of the asserted claims is found.

    • The contentions must identify limitations that defendants contend are indefinite or lack written description under § 112.

    • The contentions must identify any claims that defendants contend are directed to ineligible subject matter under § 101. This requirement has additional sub-requirements. The § 101 contentions must “(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 defendants must also produce all prior art referenced in the invalidity contentions and technical documents (which includes software) sufficient to show the operation of the accused products.

  • If there is a discovery dispute, the new rules require the requesting party to send an email with a maximum of 500 words for one issue, or a combined 1,000 words for multiple issues, to opposing counsel. The responding party has three business days to respond with an email with the same word limitations. Judge Albright encouraged use of a table to organize the disputed issues and provided an example.

  • The orders include additional rules for venue discovery, including a requirement that venue or jurisdictional discovery be completed no later than 10 weeks after the filing of an initial venue motion. The Federal Circuit recently decided against Judge Albrights’ justification of venue using car dealerships.

  • A separate “Standing Order Regarding Notice of Readiness for Patent Cases” provides an example Case Readiness Status Report with further guidelines on timing.

© 2023 McDermott Will & EmeryNational Law Review, Volume XII, Number 76
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About this Author

Associate

Cecilia Choy, Ph.D., focuses her practice on intellectual property matters. She is a certified patent agent.

Prior to joining the Firm, Cecilia was an extern for the Central District of California’s Patent Pilot Program. She has volunteered with the Make-A-Wish Foundation since 2011.

Cecilia had also conducted research in the neurosurgery department at the City of Hope Cancer Center for her PhD. Her research focused on the interactions between the brain microenvironment and breast cancer cells that metastasized to the brain.

650-815-7684
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