State of the Union – Waco Patent Litigation

Tired of political talk around the water cooler at work? Instead, talk about the current State of the Union of Waco Patent Litigation, our yearly address where we present important analytics from the previous years and take a glimpse into the year to come right here in Waco, Texas!

It has been almost 17 months since Judge Alan Albright took the Federal bench in the Waco Division of the Western District of Texas. There was much initial speculation as to the effect of Judge Albright’s appointment on the patent landscape in Waco, a jurisdiction whose total patent filings in the previous decade only amounted to the double digits.  Now, 17 months later, there is concrete data.  Let’s look at the current State of Waco Patent Litigation:

Since 2018, the District of Delaware has been the #1 most heavily trafficked venue for patent litigation filings. While the Eastern District of Texas has seen a drop in patent filings in 2018 and again 2019, as a direct result of TC Heartland, it still remains a prominent patent venue. However, in 2019, the Western District of Texas saw patent filings that threatened to catch up with the Eastern District. Ultimately, the Western District fell short by about 50 case filings.

Even more interesting is looking at the market-share that the Waco Division is occupying in the Western District. In 2018, Waco saw about 30% of the patent filings in the Western District (consider that Judge Albright was only on the bench for 3.5 months of that year). In 2019, Waco saw about 85% of the patent filings in the Western District.

The big question becomes, is this momentum continuing or has the Waco Division reach a plateau? At this point, Waco’s momentum shows no signs of stopping. So far in 2020, the Western District has eclipsed both the District of Delaware and the Eastern District of Texas in number of patent cases filed. The Waco Division accounts for 90% of those cases. Even more impressive, standing alone, the Waco Division has seen about 1.5-times more patent filings than the whole District of Delaware and over 3-times the number of patent filings than the entire Eastern District of Texas.

If this momentum continues, the Waco Division alone, and by extension the Western District of Texas, could become the most heavily trafficked patent venue in the country. Whether this trend continues for the long-haul remains to be seen, but the sequence of TC Heartland followed by Judge Albright’s appointment has created a powerful combination that has changed the landscape of patent litigation filings.

Waco Discovery Practices

With the exception of discovery necessary for claim construction, the default patent scheduling order in Waco stays all other discovery until after the Markman hearing.  This seems to offer protection against costly discovery on the front-end, until a crucial and determinative point is reached in the case: claim construction. 

However, for those parties worried that this process could delay proceedings, pre-Markman discovery is permitted by agreement of the parties or by request, when the circumstances demonstrate the necessity.  There are also other safeguards in place to streamline discovery post-Markman to avoid any delays.  Importantly, Judge Albright has granted pre-Markman motions for expedited discovery for limited purposes (i.e. jurisdictional discovery) or when good cause has been shown.

Prior to filing a motion to compel on a discovery dispute, lead counsel must meet and confer, and the parties must reach out to the Court to arrange a telephonic conference regarding the dispute.  Similar to the “hotline” available in the Eastern District, this practice hopes to curb the unnecessary time and expense of serial motions to compel and forces the parties to try to solve disputes themselves by only bringing the truly deserving disputes to the Court.  No one wants to have a telephone call with the Judge to explain that they were too stubborn to play by the rules.

So far, this practice seems to be effective.  With just over 300 patent cases filed since Judge Albright took the bench in September 2018, there have been about 10 motions to compel discovery. Based on experience, this is probably not due to the inherently agreeable nature of patent litigators.

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.

Schedule:

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.

Discovery:

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!

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!