Differences Between the Northern District of Texas’ and the Eastern District of Texas’ Patent Rules

With more patent cases being filed in the Northern District of Texas (given the Supreme Court’s recent TC Heartland venue ruling), it’s probably a good time to refresh practitioners’ recollections as to the differences between the Northern District of Texas’ and the Eastern District of Texas’ patent rules. Luckily, my friends over at Klemchuk LLP have done the heavy lifting of comparing the deadlines contained in the two sets of rules (N.D. Tex. rule summary; E.D. Tex. rule summary), and summarized them in easy-to-follow charts (N.D. Tex. chart; E.D. Tex. chart) and checklists (N.D. Tex. checklist; E.D. Tex. checklist).

As one can see, the two venues’ rules are very close to one another’s, with certain deadlines tweaked a bit. Two of the bigger differences between the two sets of rules are as follows:

  • Infringement contentions are served 10 days before the Initial Case Management Conference in the E.D. Tex., and within 14 days after the Initial Case Management Conference in the N.D. Tex. (In my opinion, the E.D. Tex. rule here makes more sense. It’s better to have the plaintiff’s infringement contentions out there prior to the Initial Case Management Conference, so that everyone will know the general scope of the case at the Initial Case Management Conference and to allow any issues with infringement contentions to be discussed then as well. That said, given the E.D. Tex. “cattle calls,” where the parties simply show up to the conference and receive a trial date, I’m not sure it makes much of a difference.)
  • Opening and responsive claim-construction briefs are served simultaneously in the N.D. Tex. (i.e., both the plaintiff and the defendant serve their opening briefs on the same day, and serve their responsive briefs two weeks later on the same day), while the plaintiff serves its opening claim-construction brief in the E.D. Tex. first, followed by the defendant’s responsive brief, followed by the plaintiff’s reply brief. (I’ve never been a fan of simultaneous briefing, as it inevitably ends up like two ships crossing in the night—i.e., the parties talk past each other because they don’t know what arguments the other side will be making. And everyone saves their best arguments for their responsive briefs and then, because there are no replies, neither party ends up responding to the other’s best arguments.)

Finally, and as a practical matter, I’ve never seen a case that strictly adheres to the rules’ deadlines. The patent rules are designed to move cases very quickly along towards trial. If a case followed the default deadlines set by the rules, the court could theoretically set a trial for approximately one year after the filing of the complaint. But courts in both the N.D. Tex. and the E.D. Tex. have been setting cases for trial well over a year after their filings, and parties in district-court litigation rarely want a trial date within 1 year of the case’s filing. Once the court sets a trial date (or the parties agree on a trial date), the parties generally can agree on all pre-trial deadlines. And, when they do, they typically provide longer periods of time for compliance with the events listed in the patent rules than the default deadlines set by the rules.

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