Year: 2020

WDTX 11th Supplemental Order on Court Operations During COVID

Yesterday marks the entry of the 11th supplemental order from Chief Judge Garcia regarding Court operations in WDTX during the pandemic. The evolution of the Court’s orders regarding COVID can all be accessed HERE.

The 11th Order is substantially similar to last month’s order and essentially extends the status quo through January 31, 2021. As a general rule, all jury trials scheduled to begin through January 31, 2021 are continued. Bench trials may proceed if they can be conducted with appropriate safety precautions.

The Order also affirms divisional discretion to proceed with jury trials. If the judges in a specific division within the Western District determine that jury trials may be safely conducted, then the most senior district judge within the division may enter an order resuming jury trials based on the unique circumstances within that division.

Judge Albright has previously exercised this discretion and entered two Divisional Standing Orders (August Order and September Order) finding that jury trials could be safely conducted in the Waco Division. Since September he has held three jury trials. His fourth jury trial, and second patent jury trial, is currently scheduled for January 11, 2021.

Intel Files Petition for Writ of Mandamus

Today Intel Corporation filed a petition for writ of mandamus in the Federal Circuit following Judge Albright’s November 20th ruling retransfering a patent infringement suit (VLSI Technology LLC v. Intel Corp., No. 6:19-cv-00254) from Austin back to Waco for a January trial setting. 

Venue Transfer History:

While this case was originally filed in the Waco Division in April 2019, Judge Albright granted Intel’s motion to transfer venue to Austin in October 2019 and retained the case on his docket (after denying Intel’s motion to transfer venue to Delaware).  The case proceeded in the Austin Division until November 20, 2020 when the Court issued a ruling transferring the case back to Waco for a January 11 jury trial setting.  Due to COVID, the the Austin Federal Courthouse is not currently conducting jury trials and there is no definitive date for jury trials to resume. However, Judge Albright has conducted three jury trials in the Waco Division since September.  As such, due to the conditions created by the pandemic, he issued a ruling retransferring the case back to Waco for the purpose of holding a jury trial in January.

Intel’s Arguments:

Following this ruling, Intel filed a motion to stay the retransfer pending mandamus review as well as an emergency motion to continue the trial.  In the Federal Circuit, Intel filed a petition for writ of mandamus.  Intel has asked the Federal Circuit to reverse Judge Albright’s retransfer ruling, keeping the case pending in Austin whereby the trial can be continued until the Austin courthouse reopens.

Next Steps:

Today the Federal Circuit ordered VLSI to respond to Intel’s petition within seven days. Any reply by Intel must be filed within three days thereafter.

Standing Order – Retroactivity of Revised OGP

Judge Albright’s newest Order Governing Proceedings for Patent Cases (version 3.2) changes Markman briefing procedure from simultaneous to non-simultaneous briefing and includes corresponding changes to the default schedule.  For pending cases with a scheduling order under an older OGP version, there may be some confusion as to whether briefing is governed by the currently-entered scheduling order (requiring simultaneous briefing) or the new OGP Version 3.2 (requiring non-simultaneous briefing).

For pending cases potentially affected by this change, Judge Albright entered a Standing Order explaining that OGP Version 3.2 applies retroactively to any case where the deadline for the parties’ opening Markman brief is more than one week after the date of this standing order, November 9. Thus, OGP Version 3.2 applies to any case where the opening Markman brief is currently due after November 16. In such cases where an older scheduling order has already been entered, the parties should file an amended proposed scheduling order to conform with OGP 3.2.

OGP Version 3.2

Judge Albright has now entered his latest version of the Order Governing Proceedings – Patent Case: Version 3.2.  This is an update from Version 3.1, posted September 22.  The two most significant changes are what we anticipated, as explained in our last post: (1) non-simultaneous claim construction briefing; and (2) default limits on pre-Markman discovery.  Here is a more comprehensive look at the key changes from the previous OGP version:

Case Management Conference:  

Since OGP Version 3.1, the Court entered a Standing Order Regarding Notice of Readiness requiring the parties to submit a Case Readiness Status Report prior to the initial CMC (see previous post HERE).  At the CMC, the parties should be prepared to discuss any pre-Markman issues raised in the joint Case Readiness Status Report.

Default Pre-Markman Discovery Limits:

The parties must still request leave to conduct pre-Markman discovery, which the Court usually grants.  These are the default limits:

  • Interrogatories: 5 per party
  • RFPs: 5 per party
  • Fact depositions: 4 hours for a 30(b)(6) witness per party

If a party provides multiple declarations in its briefing, the Court will allow the other side limited additional discovery.

Limited Number of Terms:

The Court has decreased the default number of claim terms to be construed per patent:

Markman briefing:

The Court has done away with simultaneous claim construction briefing.  The page limits remain the same, with the addition of a Sur-Reply brief:


Appendix A – Default Schedule has been updated accordingly to account for the Markman briefing changes:

Coming Soon…Updated OGP

An updated Order Governing Proceedings in Patent Cases (OGP Version 3.2) is set to be released shortly in the Waco Division. Expect two main changes: (1) non-simultaneous claim construction briefing; and (2) default limits on pre-Markman discovery. As always, when the final version is released, we will provide a more comprehensive breakdown of the changes.

Non-Simultaneous Claim Construction Briefing: For better or for worse, the Court has done away with simultaneous claim construction briefing! Many attorneys have a love/hate relationship with this practice so this marks a significant change in briefing procedure.  OGP Version 3.2 will delineate the new schedule for non-simultaneous briefing.

Default Pre-Markman Discovery Limits: There will now be default discovery limits for pre-Markman venue and jurisdictional discovery. The Court will still generally permit leave for the parties to conduct targeted discovery, however there will now be defined default limits.

As soon as the final version is posted, we will link to the new order and follow up in more detail.  Stay tuned!

The Verdict is in!

No infringement. A Waco Texas federal jury has determined that MV3 did not prove that Roku had infringed any asserted claims of the ‘223 patent.

The technology at issue in this case covered screen mirroring and screen casting. MV3 asked the jury to award it over $6 million for Roku’s use of screen mirroring technology and about $35 million for Roku’s use of screen casting technology. Despite this, the jury found no infringement.

MV3 v Roku – Waiting on the Jury…

The presentation of evidence in Judge Albright’s first patent jury trial has officially concluded and the jury is deliberating. While we await the verdict, here are some highlights and takeaways from the last week at trial.

Final Pretrial Matters:

On the morning trial began, Judge Albright took up some final pretrial matters before bringing in the jury. This included clarification on the effect of certain motions in limine on the content of the parties’ opening statements.

Exhibit Admissibility:

The parties agreed to pre-admit certain exhibits. These exhibits could be referred to throughout the trial without any formal predicate or admission of the exhibit. Judge Albright agreed with the parties’ proposal that they be permitted to read pre-admitted exhibits into the record each morning.

Objections Outside the Presence of the Jury:

Due to COVID, the Court explained that there would be no bench conferences. Thus, to address an objection outside the presence of the jury, there must be a break in the proceedings to take up argument. As such, the parties were admonished to only lodge such objections if the issue was very important. As additional incentive to limit bench conferences to necessary objections, any time spent during this bench conference would be deducted from the total time of the party who lost the objection.

Preliminary Jury Instructions:

Just after 9:00am on day 1, the seven-person jury, made up of 5 women and 2 men, was brought in to the courtroom. Judge Albright gave approximately 45 minutes of initial jury instructions including: (1) general background on patents, the rights given to a patent owner, and the patent application process; (2) the components of a patent including an explanation of the specification and claims within a patent; (3) definition of infringement including the various ways infringement can be shown; (4) brief explanation of MV3’s infringement contentions ; (5) brief explanation of the accused products; and (6) general overview of trial procedure.

Unexpected Circumstances:

While opening statements and the first witness examinations were largely unremarkable, day two brought its own set of challenges in the form of a Waco-wide power outage. While the power was restored by late morning, the technology in Courtroom 1, the only Courtroom outfitted with the proper COVID protections (including a plexiglass shield around the witness stand), was inoperable at that time. As such, Tuesday was essentially lost while Courtroom 2 was outfitted to continue proceedings on Wednesday. While the trial was expected to last one week, the combination of the technology problems and federal holiday on October 12, extended the trial halfway into the second week.


Initially, Roku did not request that the Courtroom be cleared when publishing exhibits containing confidential material, but rather that the confidential document not be published to the public on the screens in the courtroom. However, the change in Courtroom location, and thus technological capacity, and content of MV3’s expert testimony necessitated a short sealing of the courtroom while the confidential information was discussed.


Although Roku did not pursue its invalidity case at trial, Judge Albright permitted MV3 to put on a rebuttal case, consistent with the procedure out of EDTX.

Charge conference:

The charge conference was conducted on Friday afternoon in chambers. Yesterday, the parties were given an opportunity to argue their objections on the record and the charge was read to the jury yesterday afternoon. The jury was dismissed and then the parties were permitted to formally object to the instructions and verdict form on the record.

Closing arguments began promptly at 8:00am this morning and the jury is now deliberating with all of the evidence. We will wait with bated breath for the verdict and we will be sure to post the verdict as soon as it is delivered!

Judge Albright Confirms His First Patent Jury Trial Will Proceed

Judge Albright has again confirmed that his first patent jury trial since taking the bench will proceed on October 5. In his latest Divisional Standing Order he reiterated that the Waco Division has “undertaken great efforts to ensure trials can be conducted safely” and is “confident, as things stand today, it can conduct fair trials in a safe manner.”

The final pretrial conference for MV3 Partners LLC v. Roku, Inc. took place this week, with jury selection set for October 1 and trial October 5.

This Standing Order was entered in accordance with the WDTX Eighth Supplemental Order on Court Operations During COVID, entered earlier this week, which continued all jury trials currently set through October 31. However, this latest district-wide order maintained the spirit of its previous order, giving the individual divisions within the district the discretion to proceed with jury trials if the division determined the trials can be conducted safely. Judge Albright exercised his discretion to proceed with jury trials, ensuring appropriate health and safety precautions will be undertaken.

This parallels the series of events in August when the WDTX Seventh Supplemental Order on Court Operations During COVID was entered, continuing all trials through September 30, yet giving each division discretion to proceed (see previous post HERE). In accordance with that Order, Judge Albright entered his first Divisional Standing Order determining that the Waco Division would take appropriate precautions to allow jury trials to proceed safely starting September 1 (see previous post HERE).

Order Governing Proceedings Version 3.1

Today, Judge Albright posted a revised Order Governing Proceedings – Patent Case: OGP Version 3.1.  This is an update from Version 3.0, posted July 22.  The bulk of the revisions apply to the Markman hearing and General Issues sections, as well as changes to the Default Schedule.  Here are the key things to note:

Tech Tutorials and Conduct of Markman:

The OGP makes it clear that technology tutorials are optional. The revised language seems to indicate that, if utilized, electronic submission is preferred to live tutorials. Newly-added language encourages parties to only request a live tutorial if it “would be of particular benefit to the Court”.  A live tutorial would need to be requested far enough in advance that the tutorial can be scheduled at least a week before the Markman.

The guidance regarding the order of argument at the hearing has been modified as well. The general rule now is that “the party opposing the Court’s preliminary construction shall go first.  If both parties are unwilling to accept the Court’s preliminary construction, the Plaintiff shall typically go first.”

General Issues Notes:

The General Issues Notes have been re-ordered and two additions have been made:

  1. After the trial date is set, the Court will not move the date except in extreme situations.  If a party believes those circumstances exist, the parties should contact the Court to request a telephonic hearing.
  2. Paper copies of briefing for Markman, MSJ, and Daubert motions must be delivered at least a week before the hearing.  Additionally, each party must provide an electronic copy of the briefs and exhibits via Box or USB drive (this was previously stated within individual entries in the Default Schedule; the Schedule now refers to this General Issues Note when applicable).  For Markman briefs, the parties should include one paper copy of all patents-in-suit and the Joint Claim Construction Statement.  If the Court appoints a technical adviser, each party shall deliver the same documents to the TA.

Default Schedule Modifications:

Claim Construction Expert Disclosures:

  • The previous expert witness disclosure deadline for claim construction and indefiniteness (12 weeks after CMC) has been modified to pertain only to experts relied upon in a party’s opening brief and a new deadline for rebuttal experts in responsive briefs has been added four weeks later (16 weeks after CMC).
  • Additionally, the disclosure requirement is now limited to identification of the scope of the topics for the expert’s expected testimony.  This deletes the previous requirement to provide a summary of the expert’s expected testimony, opinions, and basis.

Here are redline changes to the affected portions of the Schedule: