Author: WacoPatentLawyers

The Waco Patent Lawyers make up the patent litigation team at Naman, Howell, Smith & Lee. Their expertise encompasses all things intellectual property with an emphasis on local counsel practice in Waco.

Through the Looking Glass

Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l five and a half years ago, many Defendants have considered it standard practice to file a § 101 motion early on in litigation.  However, several courts seem to be following a general rule denying pre-Markman §101 motions without prejudice, noting that that the patent-challenger can re-urge the motion post-claim construction.

Here in Waco, Judge Albright appears to follow this practice in typical patent cases.  In his recent decisions denying pre-claim construction §101 motions, he followed the guidance of the Federal Circuit’s decision in MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373 (Fed. Cir. 2019).  In MyMail, the Court noted that the question of patent eligibility under § 101 may turn on the proper construction of claim terms and thus it could be error for a district court to rule on a § 101 motion without first resolving a claim construction dispute.

While this initially may seem frustrating to Defendants, Judge Albright’s practice is balanced by limiting pre-Markman discovery.  So, while patent challengers may have to wait until after claim construction for a definitive ruling on their § 101 motions, patent holders may have to wait until after claim construction to obtain discovery.  These practices aim to limit the unnecessary accumulation of large attorneys’ fees on both sides before a determination on claim construction has been made. 

There’s No Place Like Waco

The past year and a half has been filled with speculation as to whether Waco would become the next Marshall, or whether the hype would die down and people would only remember the town for Fixer Upper. 

Now that Waco has actually established itself as a patent litigation hotbed, it is important to see what makes the Waco Division unique when trying a patent case.  Specific areas of these rules, practices, and procedures will be examined in greater detail in future posts, but here are some of the highlights:

Local Rules and Standing Orders:

A quick Ctrl+F in the Local Court Rules of the Western District of Texas – Civil Rules comes up empty when you search “patent.”  However, a short click over to the Waco Division now shows six Standing Orders for Judge Albright: four of which apply to patent cases.


Judge Albright’s scheduling order aims for the Markman hearing 23 weeks after the initial case management conference, with a trial setting 44-47 weeks after the Markman hearing.  Having only been on the bench just over a year, he has not yet had a patent case go to trial, but the first is set for trial this coming year.


Any discovery dispute must first be brought to the Court via telephone conference before any motion practice.  Early Markman hearings coupled with limited pre-Markman discovery aim to curb costly up-front and unnecessary litigation.  

Ruling from the Bench:

Judge Albright has expressed a preference for quick resolution of disputed issues.  Rather than protracted motion practice coupled with months waiting for resolution, Judge Albright has favored ruling from the bench when practicable, including claim construction!  It is not uncommon to walk out of a Markman hearing with most, if not all, of the Court’s constructions for disputed terms. 


Welcome to Waco Patent Lawyers: A blog about newsworthy developments out of Waco, TX that don’t have to do with Chip and Joanna Gaines (for now).

Unless you are brand new to the patent litigation game, you should be aware that Waco is finally on the map for something other than Fixer Upper, Baylor football, or the Branch Davidians.  The Western District of Texas, Waco Division is now the newest patent litigation hub in the nation thanks to the appointment of its latest District Judge, Alan Albright.  If patent filings continue in Waco at the rate they have been since he took the bench, this small courthouse on Franklin Ave. is poised to widen its influence far past the Heart of Texas.

This blog is designed to be a forum for up-to-date, local information on all thing patent litigation, focusing on aspects unique to the Waco Division.  Our goal is to be your one-stop resource for all things local patent litigation in Waco.

Have questions?  Have a topic suggestion?  Contact us!