Judge Albright Patent FAQ

Claim Construction
May 2020: Scheduling for large number of asserted claims

Q. If Plaintiff asserts a large number of claims, e.g., 50-60, how might that impact the claim construction schedule?

A. Plaintiff can either reduce the number of claims or, if not, then the Court will extend the schedule to provide extra time for the parties to adequately brief and prepare for the Markman hearing.

Protective Order
May 2020: Transmitting confidential information

Q. May parties transmit infringement contentions and expert reports containing confidential information?

A. Unless the protective order provides otherwise, a party many transmit confidential information–but not source code–between counsel intra-firm or between counsel and its expert, as long as that information is transmitted securely and stored in a secure manner.

May 2020: Cross-use of documents

Q. In a consolidated/companion case, can Plaintiff use documents produced in one case in another consolidated/companion case?

A. The Court generally does not allow Plaintiff to use documents from one case in another case. But if Plaintiff believes there are technical or damages documents in one case that are suitable to carrying its burdens in another case, Plaintiff should ask the producing Defendant whether it may do so. If the producing Defendant refuses, Plaintiff can request a telephonic hearing with the Court to seek permission to cross-use those specific documents.

May 2020: Working copy of source code

Q. Can the Plaintiff bring a working copy of the source code to a deposition?

A. Yes

May 2020: Source code page limits

Q. Is the 250 page limit for source code printouts per revision, version, release, etc. or in total?

A. 250 pages was an arbitrary number when the Court drafted the Order Governing Proceedings. If Plaintiff needs more pages, they should ask Defendant first. If the parties cannot agree, Plaintiff should ask the Court for additional pages. The Court will grant it if there is good cause.

May 2020: Source code deposition exhibits

Q. Can the producing party retain control of source code deposition exhibits or should copies of those deposition exhibits be provided to the taking party?

A. Generally, the taking party should get a copy of any exhibit that is used at a deposition and altered in a unique way such that the deposition exhibit is different than the source code printouts.

May 2020: Manufacturing recipe page limits

Q. How many pages of a manufacturing “recipe” may a party print?

A. In one case, 20 pages. But if Plaintiff needs more pages, they should ask Defendant first. If the parties cannot agree, Plaintiff should ask the Court for additional pages. The Court will grant it if there is good cause.

May 2020: Time limit to produce source code printouts

Q. How quickly must Defendants produce the printouts?

A. Defendants should produce within 2 business days. But if takes a little more time to get it ensure security, that’s acceptable.

May 2020: Electronic storage of manufacturing recipes

Q. Can Plaintiff host manufacturing recipes on a third-party system outside the law firm?

A. If expert is willing to swear under oath that he/she needs it, Plaintiff must setup a firewall system at the same standard that their own firms have. Furthermore, that information may not be transmitted outside the United States.

May 2020: Scope of prosecution bar with respect to expert's future work

Q. What is the scope of the prosecution bar with respect to which companies an expert may work for within the period of the prosecution bar? Does that pertain to companies that may be a subsidiary, but has nothing to do with semiconductor manufacturing?

A. The restriction applies to parents and subsidiaries, but it does not include “any related entity.”

November 2020: Starting Point for a Protective Order / Interim Protective Order

Q. Until the Court provides a default protective order, what should the parties use as a starting point and/or as an interim protective order?

A. The Court recommends using the default EDTX protective order as both a starting point and/or as an interim protective order. The Court hopes to publish its default protective order soon.

Expert Discovery
May 2020: Deposition time per expert report

Q. The Court’s default Order Governing Proceedings in Patent cases provides for a
limit of seven hours per expert report (“[f]or example, if a single technical expert submits
reports on both infringement and invalidity, he or she may be deposed for up to
14 hours in total.”). If a technical expert provides both infringement and invalidity
opinions, how may the deposing side divide the 14 hours of expert deposition time?

Option #1: No more than 7 hours for infringement and 7 hours for invalidity or

Option #2: The time may be allocated to infringement and invalidity at the
discretion of the deposing party (e.g., 11 hours for infringement and 3 hours for invalidity).

A. Expert deposition time is limited to seven hours for infringement and seven hours for
invalidity, i.e., Option #1. To the extent there is a question where the the deposing party
has a good-faith basis that they relate to both infringement and invalidity, the deposing
party may ask the question, but the party defending may object if it believes that the
question is related to the other. In those cases, the defending attorney should object.

The questioning attorney does not need to provide a justification for the question. To the
extent this is still an issue before trial, the Court will hear from both parties why the
question was fair or unfair and will make a decision at that time.

To the extent a party uses different experts for infringement and invalidity, nothing
prevents the deposing party from questioning the invalidity expert using the infringement
expert report and vice-versa.

July 2020: 101 Motions and summary judgment page limits

Q. If Defendant files a 101 motion, do those pages count against the page limits for summary judgment motions?

A. No.

May 2020: Venue discovery and response deadline

Q. If Defendant files a motion to transfer venue and Plaintiff wants venue discovery, is it okay to delay the response to the motion in order to take venue discovery first and incorporate that information into the response?

A. Yes.

July 2020: Rule 11 and Sanctions Motions

Q. What is the Court’s general thoughts on Rule 11 or sanctions motions?

A. The Court believes that Rule 11 and sanctions motions are very serious and should not be filed casually. If one is filed, the Court expects that the facts are so strong that virtually any Court in the country would grant that motion. If the Court ultimately denies the motion, the Court will be skeptical that it was filed in good faith to begin with.

September 2020: Mediation

Q. What is the Court’s view on mediation?

A. The Court does not require mediation, but if the parties believe that mediation may be helpful, the parties should notify the Court’s law clerk. To the extent the parties would like to have Magistrate Jeffrey Manske mediate the dispute, the Court is willing to enter an Order to that effect.

September 2020: Trial Date

Q. When will the Court set the trial date?

A. At or before the CMC, the Court will provide an estimated trial date based on the number of patents-in-suit, the complexity of the case, etc. To the extent the parties would like to reset the trial date, the parties should raise that at the end of the Markman hearing. After the trial date is set, the Court will not move the trial date except in extreme situations. To help the parties prepare for trial, the Court is available on very short notice to help the parties resolve issues or provide guidance that can help the case move forward. The Court is also willing, if circumstances permit, to reduce the time it has to review summary judgment and Daubert motions. To the extent a party believes that the circumstances warrant continuing the trial date, the parties are directed to contact the Court to request a telephonic hearing.

November 2020: Venue discovery default limits

Q. What are the Court’s default discovery limits regarding venue and jurisdiction?

A. The Court no longer has numerical discovery limits on the number of interrogatories, requests for production, requests for admission, depositions, and/or deposition hours, etc. for venue and jurisdictional discovery. Rather, the parties are limited only by Fed. R. Civ. P. 26(b)(1). To the extent that a party disputes the relevance or proportionality to the needs of the case, the parties are directed to contact the Court for a telephonic hearing.

November 2020: Filing of Case Readiness Status Report ('CRSR')

Q. When do the parties need to file the Case Readiness Status Report (“CRSR”)?

A. The parties need to file the CRSR within 7 days of the Answer or other response from the last defendant in response to the Original Complaint. The “last defendant” is the last defendant to answer or otherwise respond, either within one multidefendant case or across multiple, related cases.

November 2020: Time between Markman to Trial

Q. What should the parties do if the Court provides them with a trial date that is different than what is described in the Order Governing Proceedings (“OGP”), e.g., 9 or 14 months between Markman and trial?

A. The Court sets the trial date based on the number of asserted patents and the perceived complexity of the case. For a case with fewer asserted patents and/or with a lower perceived complexity, the Court will set a shorter Markman to Trial timeline. For a case with more asserted patents and/or with a higher perceived complexity, the Court will set a longer Markman to Trial timeline. The timeline in the OGP is merely an example for a case where the number of asserted patents and perceived complexity of the case warrant a 12 month Markman to trial timeline. It is not the default timeline or the shortest timeline.

If the Court provides the parties with a Markman to Trial timeline that is different than shown in the OGP, the parties should adjust the relevant deadlines to fit within the provided Markman to Trial timeframe. To assist the parties with calculating deadlines for Markman to Trial times, the Court has provided an Excel spreadsheet that will calculate the dates based on a set of specific CMC, Markman, and Trial dates. That spreadsheet can be found here.

December 2020: Telephonic Hearing Procedures

Q. What is the procedure to request a telephonic hearing?

A. Before requesting a telephonic hearing, the parties must certify that they have met and conferred and reached an impasse on all issues and requested relief. When emailing to a request telephonic hearing, the parties should e-mail a table summarizing the issue(s) (first column) and the requested relief (second column). The summary should be concise and non-argumentative.