Track B – EDTX Continues to Spearhead Efficient Patent Litigation Procedures

The Eastern District of Texas continues to lead the way with practical and efficient procedures for patent litigations.

On February 25, Chief Judge Leonard Davis implemented General Order 14-3 “Regarding Track B Initial Patent Case Management Order.”  This Order provides “additional efficiencies and cost savings” for appropriate patent cases, and is designed to complement the existing and now familiar case management procedures and local rules, or so-called “Track A,” case management schemes.

Previously, and in addition to Local Patent Rules, the Eastern District of Texas has adopted a Model Order Focusing Patent Claims and Prior Art to Reduce Costs, as well as a Model Order Regarding E-Discovery.

The Track B Case Management Order becomes effective when either all parties file a joint notice electing its entry; or by an order of the Court. The former is due on or before the date for defendants to answer or move under Fed. R. Civ. P. 12(b). Among the notable provisions and timeframe of the Track B case management plan are:

• Infringement Contentions and Licensing Disclosures: Within 14 days of all defendants’ answer or Rule 12(b)(6) motion, the plaintiff patentee shall serve its Local Patent Rule (“P.R.”) infringement contentions and accompanying production in compliance with P.R. 3-1 and 3-2; and produce all licenses or settlement agreements concerning the patent(s)-in-suit and any related patent.
• Initial Disclosures and Summary Sales Information: Within 30 days of service of the above infringement contentions, all parties shall serve Rule 26(a)(1) Initial Disclosures; and each defendant shall also produce summary sales information reflecting the quantity of accused products sold in the United States and the revenues from those sales. “Accused products” include all products identified in the infringement contentions and all reasonably similar products, which is defined as any other products that a party would reasonably expect to be accused given full discovery.
• Good Faith Damages Estimate: Within 14 days of service of the foregoing Initial Disclosures and summary sales information, each party claiming patent infringement shall file a good faith estimate of its expected damages, including a summary of its methodology. Importantly, this good faith estimate is non-binding and will not serve to limit the damages a party may recover.
• Invalidity Contentions: Within 14 days of service of the good faith estimate of expected damages, each party opposing a claim of patent infringement shall serve its invalidity contentions and accompanying production in compliance with P.R. 3-3 and 3-4.
• Claim Construction: Within five days of serving the invalidity contentions, plaintiff will file a notice indicating the case is ready for management conference. This will trigger claim construction disclosures under P.R. 4-1 through 4-3 and related briefing, meaning hopefully the parties will have a claim construction ruling before expert and summary judgment briefs are due.
• Conference and Discovery Plan: This Track B also invites several issues for early discussion which will hopefully streamline the case, reduce motion practice, and decrease discovery costs. This includes consolidating cases; producing documents based on mandatory disclosure or specific requests; using other model orders to limit patent claims and prior art; outlining “clearly” dispositive issues and likely discovery disputes; and expediting trial.
• Limited Discovery Prior to Conference: Unless leave of court is granted (or the parties stipulate otherwise), discovery is limited to the triple 5’s before a case management conference is held: 5 interrogatories, 5 requests for production, and 5 requests for admission.
• Sanctions: And, significantly, the Order expressly states that a party’s disclosures must be reasonably complete and have a good faith basis, and that a failure to comply “invites sanctions.”

As patent practitioners will appreciate, the Track B General Order provides a streamlined and efficient process that will be appropriate in many scenarios. However, to realize these efficiencies, both the patentee and accused infringer will have to prepare and understand their case much earlier than other jurisdictions. Gibbons will continue to monitor developments in this area, and particularly, whether other District Courts follow the Eastern District of Texas’s lead and adopt a similar model.