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Waco Judge Updates Patent Procedures After Two Years on Bench

July 21, 2020, 8:14 PM

U.S. District Judge Alan Albright has updated his procedures for patent cases based on experience from his two years on the bench in a district that has become one of the country’s most popular venues for such actions.

The former Bracewell LLP patent litigator became a judge in the Waco-based U.S. District Court for the Western District of Texas in September 2018. From the start, he’s had unusual rules for patent cases that are meant to help cases move along efficiently.

The latest version of his guidance furthers that purpose. “Most of these changes support his fundamental approach that a patent case can move through to trial relatively quickly” and that can happen before the U.S. Patent and Trademark Office can finish related administrative proceedings, solo patent practitioner Jennifer Kuhn in Austin, Texas, said.

Albright’s order makes clear that parties shouldn’t ask for too many extensions or seek interpretation of too many patent terms.

“The changes reflect experiences gained through the first, nearly two years of Judge Albright’s rapidly-expanding docket, combined with his never-ending mission to provide an eminently fair forum for all litigants, to maximize efficiency, and to provide procedures that reflect, and as much as possible to help address the real-life challenges of litigators and their clients in complex patent cases,” David Henry, leader of the IP practice group at the Texas law firm Gray Reed & McGraw LLP, said.

Term Interpretations Limited

Albright’s prior order didn’t specify a limit on how many terms parties could ask the judge to interpret but encouraged them to focus on their top 10 in order of importance. A judge’s interpretation of disputed patent terms, known as claim construction, is an important milestone in a patent case.

“Based on the court’s experience, the court believes that it should have presumed limits on the number of claim terms to be construed,” the new order says.

The presumed limits are: 10 terms in cases involving one or two patents; 12 terms for three to five patents; and 15 terms for more than five patents. Parties can ask for Albright’s permission if they want him to consider more terms.

The limits “reflect the reality that most patent cases can be determined with construction of no more than (and often less than) the stated number of terms, as relate to the number of asserted patents,” Henry said.

The allowances are “rather generous” compared with other courts and are “directed to Judge’s stated goal of ‘always trying to get it right’ when it comes to claim construction (and all aspects of a patent case),” he said.

Fewer Audio Recordings

Albright is known for requesting audio recordings of briefs so he can listen to them while commuting or exercising.

But now parties don’t have to submit audio recordings of their briefs related to claim construction because he decided they are of “limited value.”

This change may have to do with the increasing number of patent cases on Albright’s docket. “I suspect that the change from encouraging to generally discouraging audio renditions of claim construction briefing reflects the simple reality of a lack of time to listen to all such submissions, as was once possible before present case loads,” Henry said.

Fairness may also play a role. “There may have been concern about how smaller parties with fewer resources might not be able to produce a recorded brief in the manner that large law firms and large clients can,” Kuhn said.

Other Changes for Efficiency

Albright used to require the parties to meet once after the claim construction hearing to discuss significantly narrowing the number of terms asserted and prior art references at issue.

Now they must meet a second time to try to iron issues out before trial.

Defendants are also discouraged from asking for extensions longer than 45 days to respond to the complaint. “Longer extensions are disfavored and will require good cause,” the order says.

To contact the reporter on this story: Perry Cooper in Washington at

To contact the editors responsible for this story: Melissa B. Robinson, Keith Perine at