Judge Albright’s Latest Rules Ensure the WDTXs Place as the New Patent Rocket Docket

Judge Alan Albright

Numbers don’t lie. By any account, Judge Alan Albright’s Western District of Texas courtroom in Waco, Texas is the preferred venue for patent cases and the new patent rocket docket. Prior to Judge Albright taking the bench, patent cases filed in Waco were scarce. In 2016 and 2017, the two years prior to Judge Albright’s appointment, there were only five patent cases filed in Waco. Indeed, since the division’s creation in 1984, fewer than 10 patent cases had been filed in Waco. But since taking the bench, patent cases have exploded. In 2018, the WDTX had 90 patent cases. Last year, in 2019, the WDTX saw a three-fold increase, with 278 patent cases in the district. In 2020, the pace has continued. Through November 23, 2020, 3,863  patent cases have been filed nationwide. Of that number, nearly 791  have been filed in Judge Albright’s court, meaning 1/5th (20%) of all new patent cases are filed in his court. If this pace continues for the year, the WDTX will see a tripling of the number of patent case from 2019 and a  more than 700% increase in patent cases over the last four years.

Lawyer-Friendly Approach

Having practiced with Judge Albright for five years while he was in private practice and, more recently, trying the first bench trial involving IP to Judge Albright since he took the bench, my personal experience is that parties and practitioners before Judge Albright will find themselves before a smart judge who is always well-prepared and takes a lawyer-friendly approach to his cases. Parties in his courtroom with a patent dispute will quickly learn that they have a judge with deep experience with patent cases, local rules designed to get a more efficient resolution of the case, and a reasonable approach to litigation.

Indeed, his local rules and predictable case schedules will help clients, in-house counsel, and outside attorneys develop and stick to case budgets, avoid gamesmanship, and eliminate needless motion practices that cause too much delay and costs in the federal court system. More importantly, his refinement to his local rules for patent cases (called is Order Governing Proceedings) not only reflects how Judge Albright likes patent matters handled but also ensures his goal of rapidly advancing patent cases in his court.

September Modifications

On September 22, 2020, Judge Albright again modified his Order Governing Proceedings. Like his July modification, Judge Albright maintained his order that motions to transfer motions must be filed within two weeks of the Case Management Conference (CMC). The deadline for filing an amended complaint was moved to 16 weeks after the Markman hearing, giving the plaintiff four more weeks. The order also provides that no motion is required to file an amended complaint during this period, even if a party seeks to amend in response to a 12(c) motion.

As for the Court’s Markman procedures, the Court moved up its target Markman hearing date by a week, from 24 weeks after the CMC to 23 weeks after the CMC. Judge Albright also changed Order regarding the limit of terms for claim construction, noting that the “presumed limit” is the maximum number of terms that “each side” (versus “the parties”) may request the Court construe without leave of Court. So now, the presumed limits absent leave of court per side are:

            1-2 Patents                 3-5 Patents                 More than 5 Patents

10 terms                      12 terms                      15 terms

The Order also made changes to expert testimony. Notably, the Order now requires that 12 weeks after the CMC, the parties need only identify expert witnesses and their expected testimony they plan to rely on in their opening claim construction briefs. Rebuttal expert witness and their expected expert’s testimony are to be identified up to 16 weeks after the CMC (two weeks after the parties file opening claim construction briefs). The Order also seeks to eliminate any disputes over what is required to be provided by stating the parties must “provide a summary of the witness’s expected testimony including the opinions to be expressed and a general description of the basis and reasons therefor.” Failure to follow this disclosure requirement can result in the exclusion of the proffered expert and testimony.

The modified Order also clarifies the procedure for argument at the Markman hearing,  Specifically, the Order provides that generally the party opposing the Court’s preliminary construction will go first. If both parties oppose the Court’s preliminary construction, the Plaintiff will go first.

The modified Order also addresses changes to the trial setting. Namely, once the trial date is set, the Order makes clear that the Court will not move its “except in extreme situations.”

Judge Albright’s prior Orders on discovery disputes required a telephone conference with him to discuss the dispute before any motion could be filed. In practice, Judge Albright has made himself available on short notice and more than then not makes decisions about the dispute over the phone.   The modified Order continues this requirement but also states that summaries of discovery disputes raised with the Court are to be neutral and non-argumentative.

The Patent Community’s Go-To Judge

While not all patent cases can be filed in Waco due to post-Heartland venue restrictions, the WDTX is home to many companies with regular and established place of business and Judge Albright has solidified his place at the nation’s go to judge for patent cases. If patent filing trends continue through the rest of this year, we should exceed the 3,600 patent cases filed in 2019. And while no one can predict the number of cases that might be filed in 2021, we can rest assured that Judge Albright and Waco, Texas will get the lion’s share.