February 8, 2024

What to Know About WDTX Standing Order for Patent Cases – Law360

This article was a guest column published in Law360

By Archibald Cruz (February 8, 2024)

U.S. District Judge Alan D. Albright of the Western District of Texas’ Waco Division, recently signed an updated standing order governing proceedings for patent cases in his court.[1]

Referred within the order as OGP Version 4.4, the Jan. 23 order supersedes his previous standing order from April 4, 2023 — OGP Version 4.3.[2]

Although Judge Albright oversees fewer patent cases now than he did earlier in his career as a federal judge, his court remains a popular venue for patent litigation.[3]

Consequently, patent litigators who are currently practicing or are looking to practice in the Western District of Texas should familiarize themselves with the new standing order.

New Deadlines

The exemplary schedule in Appendix A adds a couple of new deadlines. Changes to this schedule are notable because Judge Albright instructs parties to enter an agreed scheduling order that tracks the exemplary schedule.

Under the new schedule, 40 weeks after the Markman hearing, the parties must submit Form AO 85 — “Notice, Consent, And Reference Of A Civil Action To A Magistrate Judge” — if they consent to a trial before the magistrate judge. After 46 weeks following the Markman hearing, the parties must notify the court of any changes to the asserted patents or claims within seven days of the change.

The updated standing order includes other deadlines not specifically listed in Appendix A. Under General Issue No. 4, the plaintiff must update Form AO 120 — “Report on the Filing or Determination of an Action Regarding a Patent or Trademark” — within 10 days of any relevant changes.

The order offers amended complaints and new claims as examples of relevant changes that would require updating the form.

A new “Trial & Post-Trial Issues” section also adds some deadlines. The standing order imposes a 14-day deadline following a jury verdict for the parties to file a joint proposed final judgment.

Furthermore, the same day that post-trial briefing is completed, the parties are instructed to email Judge Albright’s law clerks with a list of pending motions and a request for a hearing, if the parties want one.

And before the court issues an order on post-trial bonds, the parties should contact the court’s District Clerk’s Office to get the information they need to fill out the order.

In general, these new deadlines evidence the court’s attempts to offer more predictability and structure for patent cases in Waco. Attorneys should keep these changes in mind throughout the litigation process to avoid potential sanctions.

For instance, under the new schedule, failure to timely inform the court of newly asserted claims may result in waiver of those claims. Accordingly, a patent owner seeking to assert new claims or patents should be mindful of the express seven-day deadline to notify the court.

Clarifying the Court’s Motion in Limine Practices

Several changes in the standing order specifically address motions in limine. For example, the new standing order introduces Appendix C, which gives litigants a standard Order on Motions in Limine.

This standard order offers 23 rulings that automatically apply to any patent case before Judge Albright. Appendix C mostly mirrors the typical order that Judge Albright has issued in his patent cases as early as April 2023, shortly after he issued the previous version of the standing order.[4]

Thus, while attorneys who have already tried a case before Judge Albright may recognize Appendix C, lawyers who are new to his court can now easily access and review the standard limine order.

However, Appendix C adds some important language that the judge’s previous limine orders lacked. The standard limine order now states that “MILs that simply restate the rules of evidence or other legal principles or that are more appropriately motions for summary judgment or Daubert motions are improper.”

Essentially, motions in limine should be substantive rather than conclusory, and attorneys cannot use a motion in limine as a backdoor for other motions that have either been denied or waived.

Many of the rulings in the standard Order on Motions in Limine are typical for the average trial, not specific to patent trials. For example, under the court’s limine order No. 3, the attorneys cannot talk to prospective or actual jurors about a party’s “overall financial size, wealth, or executive compensation.”

Limine order No. 8 likewise prohibits the parties from commenting on a witness’s choice to testify in a language other than English.

Other limine orders are more directed to patent cases, and some are specific to Judge Albright’s court. While the parties cannot use the terms “patent troll,” “pirate,” or even “patent assertion entity,” the judge allows use of the term “nonpracticing entity,” per limine order No. 11.

Additionally, in limine order No. 20, the court specifically bars “evidence, testimony, or argument suggesting that the Western District of Texas is an improper or inconvenient venue in which to try this case.” Requests to transfer out of the Western District of Texas have been a hot topic in the Federal Circuit in recent years.[5]

The newly added General Issue No. 7 effectively recites the first paragraph of the standard limine order. That is, this standard Order on Motions in Limine applies equally to all parties in cases before Judge Albright.

Moreover, each party may propose and argue up to five of its own motions in limine at the Pretrial Conference. The judge further clarifies that he will not consider motions in limine that are multifarious so as to exceed the five-motion limit, simply restate legal principles, or include matters that are better suited for motions for summary judgment or the motions known as Daubert, articulated in the U.S. Supreme Court’s 1993 Daubert v. Merrell Dow Pharmaceuticals decision.

Because the standard Order on Motions in Limine applies automatically and to all parties in the case, counsel should review this list in advance of the pretrial conference and instruct clients and witnesses to honor these rulings at trial.

Additionally, because of the new standing order’s quantitative and substantive restrictions on motions in limine, attorneys will need to be more strategic with their motions.

Further Codifying Practices of the Court

Of the remaining revisions in the new standing order, a handful of changes seek to streamline some matters for the court.

For example, the section covering discovery disputes now expressly applies to “procedural matters such as extensions of time, excess pages, narrowing claims and prior art, amending invalidity and infringement contentions, etc.”

Consequently, before a party may file a motion to compel or a motion on the aforementioned procedural matters, lead counsel — which the new standing order clarifies must have decision-making authority — must meet and confer in good faith to try to resolve the dispute and summarize the parties’ positions for the court’s clerk.

Further, any motion referencing an expert report — including motions to strike, Daubert motions, and summary-judgment motions — must now include a full copy of the expert report as an exhibit.

While requiring the full expert report for each motion may exponentially increase the size of a casefile, this practice should make it easier for the judge to place the cited portions of an opinion in context.

Other changes better reflect the existing practices in Judge Albright’s court. For instance, disputed jury instructions must cite the court’s prior jury instructions and should track the language of those prior instructions. Moreover, the public can no longer access the Zoom video feed of remote hearings, rolling back some accommodations made early in the COVID-19 pandemic.

Guidance Going Forward

The new standing order offers some clarity and brings the rules closer to practices as refined in Waco’s federal court.

While the changes are not drastic, attorneys practicing before Judge Albright or Magistrate Judge Derek T. Gilliland should review the new order at each stage of litigation to ensure compliance.

Archibald Cruz is an associate at Patterson + Sheridan LLP.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of their employer, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Standing Order Governing Proceedings (OGP) 4.4—Patent Cases (Jan. 23, 2024),
https://www.txwd.uscourts.gov/wp-content/uploads/2023/01/Standing-Order-Governing-Proceedings-Patent-Cases-01232024.pdf.

[2] Standing Order Governing Proceedings (OGP) 4.3—Patent Cases (Apr. 4, 2023),
https://www.txwd.uscourts.gov/wp-content/uploads/2023/01/Standing-Order-Governing-Patent-Cases.pdf [https://web.archive.org/web/20240119070827/https:/www.txwd.uscourts.gov/wp-content/uploads/2023/01/Standing-Order-Governing-Patent-Cases.pdf].

[3] See Q4 in Review, RPX Rational Patent (Jan. 2023), https://www.rpxcorp.com/wp-content/uploads/sites/6/2023/01/RPX-Q4-in-Review-January-2023.pdf.

[4] See, e.g., Order on Motions in Limine, UNM Rainforest Innovations v. D-Link Corp., No. 20-cv-00143 (W.D. Tex. Apr. 25, 2023); Order on Motions in Limine, Sonrai Memory Ltd. v. Micron Tech., Inc., No. 23-cv-01407 (W.D. Tex. Dec. 27, 2023).

[5] See, e.g., In re Google LLC, 58 F.4th 1379 (Fed. Cir. 2023).


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