Standing Order for Discovery Hearings in Patent Cases:
Today, Judge Albright entered a new Standing Order for Discovery Hearings in Patent Cases. No later than 7 days after a discovery hearing, the prevailing party must submit a proposed order briefly summarizing the dispute and the parties’ understanding of the Court’s ruling. If the parties cannot agree on the language in the proposed order, they may submit respective proposed orders to the Court for resolution.
The Court has noted recently that that many discovery hearings involve the same disputed issues. This new procedure will provide a written order memorializing the Court’s ruling. Parties who later have the same discovery dispute will then benefit from the Court’s previous rulings which will hopefully decrease the number of discovery hearings regarding the same issues.
Amended Standing Order Regarding Notice of Readiness for Patent Cases – Version 2.2:
Yesterday, Judge Albright entered an Amended Standing Order Regarding Notice of Readiness for Patent Cases. The major amendment involves situations where there are “CRSR Related Cases”, defined as cases that (1) are filed within 30 days after the first case is filed; and (2) share at least one common asserted patent.
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!
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.