As local practitioners know, ED Tex judges are well-known for coming up with new procedures to handle recurring issues in cases. From the 1991 CJRA Plan to patent rules to local rules, we frequently see different tools tried to assist chambers in handling recurring issues more efficiently.
Nor is this limited to local rules and procedures - the new discovery rule amendments that take effect next month include a suggested "best practices" provision for court conferences preceding the filing of discovery motions (anticipating judges' long-felt desire to get involved in more discovery disputes, no doubt). In preparing my seminar papers discussing the rule changes this initially struck me as odd until I realized that it was not substantively different from the "letter briefing" requirement that some ED Tex judges have borrowed from other districts to help winnow through certain prospective motions to determine which are appropriate for full briefing.
Which prospective motions? It depends on the judge and the timing - some judges use it for summary judgment motions, some for Daubert motions, and some have used it for 101 motions (patentable subject matter) filed at the early stages of patent cases. Candidly, which motions are subject to it changes as judges decide which motions are best suited for letter briefing, as opposed to, say, page limitations or numbers of motions, or other tools (trial by combat has not been used with any frequency, but magic 8 balls are on the upswing in some courts, I hear). As an aside, I keep reading people say that judges aren't allowing filing of motions raising 101 grounds without "permission", which is not correct - that provision was only for prospective motions raised until shortly before the Markman hearing, and permitted letter briefing so that the merits of the prospective motion were before the court - "permission" was a ruling on the merits of the letter brief.
Earlier today, Judge Gilstrap apparently celebrated Veteran's Day by issuing a new standing order that tries out a different mouse trap on the issue of pre-Markman 101 motions. In it, he states that "this Court recognizes that claim construction may be appropriate in properly deciding issues under 35 U.S.C. § 101 in certain cases and such may not be appropriate in other cases" and therefore "the Court, in seeking to efficiently manage its docket, believes such efficiency is enhanced by early input as to the propriety or lack thereof regarding claim construction prior to consideration of such motions."
New Certification Requirement
Accordingly, he now requires parties filing pre-Markman hearing dispositive motions under 35 U.S.C. § 101 (that is: prior to entry of the Court’s claim construction order) to include, as a part of such motions, the following certification:
CERTIFICATE OF COMPLIANCE WITH THE COURT’S 35 U.S.C. § 101 MOTION PRACTICE ORDER
The parties agree that prior claim construction is not needed to inform the Court’s analysis as to patentability. _____
The parties disagree on whether prior claim construction is not needed to inform the Court’s analysis as to patentability. _____
/S/ Lead Counsel for Movant
The meet and confer process required in advance of properly making the above certification to the Court is a little different in that requires one-on-one communication by lead counsel only (hence the "one on one" moniker). To answer the question that's on everyone's mind, no, the conference doesn't need to be in person - phone will do. To the extent such certification reflects disagreement, the parties are directed to submit a joint letter containing not more than two (2) pages from each side (four pages total) to the Court within ten (10) days from the filing of the § 101 motion, setting forth their respective specifics surrounding such disagreement, including, in particular, any claim terms that the respondent believes need to be construed, why such is needed, and what intrinsic references support such position.
No Requirement of Leave to File 101 Motions
The Court states that it will exercise its inherent power to manage its docket by considering the parties’ positions in this regard as it schedules and takes up such § 101 motions. But it clarifies that the order does not require advance leave of court to file such § 101 motions, and that the new order supersedes the provisions of current docket control orders which had required leave of court to file a § 101 motion in advance of claim construction.