In mid-July, Judge Albright updated his patent Order Governing Proceedings (OGP). After reviewing the latest OGP, several noteworthy additions are apparent.
First, concerning discovery (which is generally stayed until after the Markman hearing), the Court generally allows parties to conduct “targeted venue discovery” concerning motions to transfer venue. In light of Judge Albright’s numerous orders on 1404 motions, such an addition to the OGP makes sense because of “the information asymmetry between the parties at this stage of the case, which unfairly handicaps the patentee/non-movant as it can only find potential witnesses using public information whereas the alleged infringer/movant has both public and confidential information.” Fintiv v. Apple, No. 6:18-cv-00372-ADA, 2019 WL 4743678, at *4 (W.D.T.X. Sept. 13, 2019).
Next, the Court restricted the number of claim terms to be construed at the claim construction hearing. Of course, Judge Albright left some wiggle room, as parties can request additional terms to be construed with leave of court. Judge Albright set the presumed limits on claim terms based on the number of patents-in-suit as follows:
|1-2 Patents||3-5 Patents||More than 5 Patents|
|10 terms||12 terms||15 terms|
The Court also added several items under its “General Issues” section of the OGP. First, the OGP provides that substantive briefs via audio file may be helpful to the court in some instances. However, the OGP also states that “audio recordings of Markman briefs are of limited value and those need not be submitted.” Also note: the Court uses Box, not another cloud storage, so don’t use Dropbox.
Another important addition: The Court is amenable to a streamlined case schedule and discovery and encourages parties to contact it in the event this is helpful.
Additionally, the Court is now requiring paper copies for Markman briefs, summary judgment motions, and Daubert motions. Parties are to deliver to Judge Albright’s Chambers one paper copy of its Opening, Response, and Reply briefs no later than one week after the last-filed brief or at least one week before the hearing, whichever is earlier. However, parties are to omit any attachments to their briefs in the hardcopy submission.
At general issue number 5, the OGP provides one of the most interesting additions to the OGP. It states: “Plaintiff must file a notice of 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 two weeks of the filing of the IPR.” Such an addition further bolsters the point that Judge Albright is positioning his court to be faster than the PTAB.
The last changes to the OGP occur in the Court’s default schedule. Fact discovery is now open one day after the Markman hearing, rather than one week after the hearing. The next change occurs 26 weeks after the Markman hearing. Parties are to meet and confer to discuss significantly narrowing the number of asserted claims and prior art references at issue. Parties are directed to contact the Court to schedule a teleconference to resolve any dispute. The second meet and confer, 39 weeks after the Markman hearing, parties are again asked to narrow the number of claims asserted and prior art references at issue to “triable limits.” Parties are required to file a Joint Report within 5 business days regarding the results of the meet and confer.