The First Cut Is the Deepest (but Not Really): Pre-Markman Discovery in Waco Division Patent Cases

The default rule in patent cases pending before the Waco Division is that fact discovery is stayed until the Markman hearing is over; that hearing in turn typically follows service of a responsive answer or Rule 12 motion by approximately seven months. Specifically, the Court’s operative Order Governing Proceedings (OGP) provides:

Except with regard to venue, jurisdictional, and claim construction-related discovery, all other discovery is stayed until after the Markman hearing. Notwithstanding this general stay of discovery, the Court will permit limited discovery by agreement of the parties, or upon request, where exceptional circumstances warrant.

What does this look like in practice? First and foremost, the Court’s statement that it “will permit limited discovery by agreement of the parties” should be taken at face value—i.e., as long as the parties (1) agree, (2) don’t disrupt scheduling of the Markman hearing, and (3) don’t create a substantial burden on the Court (e.g., by squeezing turnaround times), the Court typically freely allows the parties to craft an appropriately tailored pre-Markman discovery plan. As we all know, of course, litigation adversaries often don’t agree—in which case “the Court encourages the parties to contact the Court to request a telephonic discovery hearing” (OGP). Again, this statement should also be taken at face value—Judge Albright genuinely welcomes these conferences, which can be scheduled on very short notice. (For more on this topic, see the last two exchanges in Part 2 of Mark’s Q&A with Judge Albright.)

So in practice, what sorts of pre-Markman discovery have parties effectively pursued? (Other than claim-construction-related discovery, of course—we presume it’s obvious to the reader why that discovery should be completed before the Markman hearing.) The July revisions to the OGP codify the two most commonly encountered categories of pre-Markman discovery that the Court has historically permitted, as follows:

First, the OGP addresses “discovery outside the United States”: The Court’s OGP sets out a relatively compressed timeframe between Markman hearing and trial—aspirationally just 52 weeks. Effecting service on third-party foreign suppliers via the Hague Convention (or otherwise, in the case of non-signatories) and then completing follow-on discovery may require longer than this interval would practically allow. Thus, the Court will typically allow the parties to begin the service process shortly following the Case Management Conference (CMC)—even if actual substantive document and/or deposition discovery does not actually get underway until after claim construction. Based on a similar rationale (i.e., insufficient time between Markman and trial), the Court has also permitted parties to initiate discovery directed to US-based third parties with particularly elaborate requirements for conducting source code discovery, etc.

The OGP also explicitly contemplates “targeted discovery … with regard to motions to transfer venue or motions to dismiss based on lack of jurisdiction”: Here the OGP specifically confirms that such “targeted” discovery may include “requests for production, interrogatories, and depositions.” But counsel should be mindful that the use of the word “targeted” is intended to have force—i.e., venue discovery is not intended as an opportunity to conduct a wide-ranging investigation. As one example, in Castlemorton Wireless LLC v. BOSE Corp., Judge Albright limited venue deposition discovery to “two depositions of three hours each or … one deposition of four hours total” (with the determination of one vs. two witnesses to be made by the producing party). (No. 6:20-cv-00029, May 11, 2020 Hrg. Tr.) [Updated 11/20/20: The Court issued a new Standing Order effectively removing any limits on venue and jurisdictional discovery.]

But other categories of pre-Markman discovery not listed in the OGP may also come into play, as when a defendant brings to the Court’s attention an issue that could lead to an early disposition of the entirety or substantial majority of a case. For example, in Flexiworld Technologies, Inc. v. Amazon.Com, Inc. (No. 6:20-cv-00553), the parties engaged in pre-Markman discovery regarding certain assignment documents bearing on an alleged standing defense relating to ownership of the patents-in-suit. And in Theta IP, LLC v. Samsung Electronics Co. (No. 6:20-cv-00160), the Court permitted “limited” pre-Markman discovery in connection with an affirmative defense of implied license based on the resolution of a prior litigation between the parties. (Full disclosure: The author appeared as counsel in the Theta v. Samsung case while affiliated with his prior law firm.

Pre-Markman discovery may also be allowed based on simple practical considerations—e.g., when discovery is manifestly more convenient during the pre-Markman vs. post-Markman period. As an example, in Nygaard v. Federation Internationale de l’Automobile et al. (No. 6:20-cv-00234), the Court allowed for the possibility of early depositions should it come to pass that the Formula 1 racing season might render certain witnesses unavailable based on their global competition travel schedule. 

In sum, the Court’s stay of pre-Markman discovery is the controlling default, but the Court has been willing to allow several exceptions. Counsel seeking pre-Markman discovery are advised to examine whether the discovery in question really needs to be obtained at an early stage of the case; whether the category of pre-Markman discovery sought can be suitably narrowed; whether the Court has a past track record of allowing that category of pre-Markman discovery; and whether a compelling showing can be made to one’s adversary so as to allow the parties to proceed by agreement.

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*If you can name—without cheating!—any of the artists who recorded “The First Cut Is the Deepest” other than Cat Stevens, Rod Stewart, or Sheryl Crow, let us know, and you’ll win a prize.

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