WDTX – Waco Issues New Patent Proceedings Order

Late last week, Judge Alan Albright issued an order governing patent proceedings in his court in the Waco Division of the Western District of Texas, and I wanted to take a few moments to go through the provisions and compare them to provisions in other courts in the area. To my knowledge they have not yet been incorporated into any patent case scheduling order, but that will likely change soon, as I have a scheduling conference with Judge Albright Friday morning, and pursuant to the Court’s direction we are submitting discovery and docket control orders for our case based on that new scheduling order. So I’ll be posting those soon.

The place to start when analyzing this order is to briefly review the relevant procedures used for patent cases in neighboring districts prior to it on certain points. Post-TC Heartland, patent plaintiffs have a limited selection of venues, so a case that formerly could have been filed in EDTX could certainly have been filed in WDTX or NDTX as well. The analysis below is of interest when all three are still available, or there is at least a choice between WDTX and NDTX or other fora. Only rarely will WDTX be the only local forum available, so parties will typically be evaluating the pros and cons of different jurisdictions.

WDTX

Following Judge Walter Smith’s retirement several years ago, the Waco Division did not have a district judge prior to Judge Albright’s appointment. The Waco civil docket was being covered by Judge Pitman out of San Antonio, but patent cases were generally filed in the Austin Division, where my understanding is that they were (and are) assigned to Judge Lee Yeakel, or at least use similar procedures.

First of all, the WDTX does not have patent rules. Generally speaking, Judge Yeakel stays cases pending conducting the scheduling conference, then enters an order setting deadlines through the Markman hearing, but otherwise maintaining the stay, as shown in the order below.

Following the Markman, a second scheduling order is issued with dates through the pretrial conference and jury selection. Final infringement and invalidity contentions are due after the Markman proceedings conclude.

NDTX

In 2009 in Miscellaneous Order 62, the NDTX created a set of patent rules similar (but not identical) to the NDCA and EDTX rules that would govern in patent cases, if the presiding judge chose to use them, as is usually the case. In 2011 the NDTX – became a patent pilot court, meaning that certain judges agreed to hear patent cases, so in most cases any patent cases filed in the Dallas Division are assigned to these judges, who typically apply these rules.

EDTX

As readers are aware, the EDTX has a set of local patent rules, and at least for patent cases in the Marshall, Texarkana and Sherman Divisions, discovery is not stayed pending the Markman hearing – although discovery into damages is stayed until that stage in patent cases in the Sherman Division.

The Waco Order Governing Proceedings – Patent Cases

It is against this backdrop of the surrounding districts with significant patent filings that we come to Judge Albright’s new order. It provides a single document setting forth the discovery provisions and the schedule of the case through jury selection/trial, and contains numerous expressions of the Court’s policies regarding, for example, claim construction, discovery disputes and summary judgment practice.

Some of these provisions are new to practitioners – for example “[t]he Court encourages the submission of briefs longer than 10 pages via audio file so that the Court can listen to the arguments.” Local lawyers are already working on signing Morgan Freeman and Liam Neeson up for narration, I’m sure. It also provides for a “dueling” briefs Markman briefing procedures where the parties file simultaneous opening and responsive briefs, which is something I’ve been interested in seeing for some time.

Against the existing WDTX backdrop of (1) a discovery stay until after Markman and (2) no patent rules, it makes two significant changes which may play a role in parties’ filing decisions, both vis a vis the Austin Division and other districts.

First, while it continues the prior WDTX patent practice of staying all non-claims construction discovery until after the Markman hearing, there is a new exception that the preliminary invalidity contentions must include “summary, annual sales information for the accused product(s) for the prior two years, unless the parties agree to some other timeframe.” The parties can conduct other discovery by agreement, or seek leave of Court.

Second, with respect to patent rules, while it doesn’t adopt a version of the patent rules used by EDTX, NDCA, or individual judges in NDTX, it does incorporate the specific language of some of the traditional rules. For example “preliminary” infringement and invalidity contentions contain specific language regarding their contents from the rules. But some provisions are not included, such as, for example, the restriction in P.R. 3-6 that amendments to contentions require leave of court unless they are in response to the Court’s claim construction ruling. Instead, the scheduling provisions state that “[t]he 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 claims requires leave of court so that the Court can address any scheduling issues.” So under this order, amendment is allowed without leave with the exception of amendments by plaintiffs to add claims.

“Reasonable Efforts”

While consistent with prior WDTX practice, which did not treat contentions as final absent leave, allowing a post-Markman amendment, the provision differs from the EDTX and NDTX, which treat contentions as final once made, and prohibit amendment of contentions unless good cause is shown. The NDTX patent rules provide some clarity to the obligation when they state that the party must state that the new information was “not known to that party prior to the motion despite diligence in seeking out same”. In the EDTX, the standards are set forth in caselaw on motions for leave to amend contentions.

It will be interesting to see how the “reasonable efforts” language is interpreted in practice when a party amends to change their infringement or invalidity theories two months after the Markman hearing. Will it be read like the NDTX language to require that the original contentions must have been diligent about seeking out the necessary information for the contentions? Or will it be interpreted as allowing any later amendment as long as the original contentions reflected “reasonable efforts”, i.e. a significant amount of work?

A brief illustration might explain what I’m talking about. My boys Grayson James, Collin Demmer, and Parker Noland were nice enough to completely mess C&P’s room up for purposes of this photograph for this post. Since of course, no teenager would have a room this messy, this is only what their room looks like for purposes of this illustration. I promise.

Let’s say we’re in Waco and I tell Collin and Parker to undertake “reasonable efforts” in cleaning their room. And let’s assume that they eliminate the space-related items – the Star Trek captain’s chair bean bag and starship and assorted Saturn V models, which as you can tell is a substantial portion of this (hypothetical) mess. Is that “reasonable effort” in cleaning sufficient, or were they required to make a “reasonable effort” to clean the entire room. (Parker and Collin vote for the first, and claim the second is impossible).

What if we’re in Dallas (or perhaps Marshall) and the obligation was to clean their room and the only way Dad doesn’t go ballistic is if the cleaning of the room was diligent, and the only thing that wasn’t picked up was the stuff that had fallen behind the furniture, which they had thought was too small to hold anything? Again C&P state that they would really rather be in Waco in front of Judge Albright.

The question is hypothetical here (again, I promise), but with respect to, for example, new invalidity theories asserted for the first time weeks after the Markman hearing, it might be an interesting issue.

Comparisons?

Again, if the new caselaw on where patent cases can be filed makes the WDTX the only practical forum, the above analysis won’t matter. But where multiple forums are available, I would expect practitioners to look closely at the discovery stay and amendment of contention provisions in the different forums when deciding where to file cases.

Ed note: I discovered yesterday that my grandparents likely first met while working in the ALICO building in Waco in 1917, hence its use above. By the early 1920’s one and sometimes two of her sisters (here Mary Laura Loyola Kleypas, a.k.a. “Tommy”) had joined my grandmother in working there. Don’t you love the filing cabinets?

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