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Judge Gilstrap’s New Standing Order Eliminates Requirement to Seek Leave Prior to Filing Alice Motions, Introduces New Certification Requirement

On November 10, 2015, Judge Rodney Gilstrap of the United States District Court for the Eastern District of Texas issued a new standing order eliminating the requirement to seek leave before filing motions to dismiss on grounds that a patent is invalid under 35 U.S.C. § 101. A significant influx of these so-called “Alice motions” were filed in the Eastern District of Texas following the Supreme Court’s decision in Alice Corp. Pty Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Judge Gilstrap’s previous Docket Control Order required that parties file letter briefs prior to filing Alice motions.

Under the new standing order, no letter briefing prior to filing an Alice motion is required. Parties now seeking to file dispositive motions under 35 U.S.C. § 101 prior to the entry of the Court’s Markman order must include with such motions, a certification signed by the lead counsel for the movant indicating that the parties either agree or disagree whether claim construction is not needed to inform the Court’s analysis as to patentability under § 101. The order further requires that the lead counsel for each party communicate one-on-one regarding the certification. The Court has stated that the “term ‘one-on-one’ communication shall mean that lead counsel for both sides shall diligently communicate orally and directly with each other(in person or telephonically) with no others advising, interjecting, or otherwise participating in such communication.” This direct communication between lead counsel is “intended to avoid an ineffective meet-and-confer process and to heighten the level of seriousness and attention devoted to this process.”

If the parties are in disagreement regarding whether claim construction is necessary to decide the Alice motion, the parties are required to “submit a joint letter containing not more than two pages from each side (four pages total) to the Court within 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.” Such arguments are not binding on the parties. 

Under the new standing order, the certification and requirement that lead counsel engage in “one-on-one” communication prior to submitting such certification may force the opposing sides to come together and focus or narrow claim construction issues. Such discussions may also bring about earlier settlements and may reduce the number of Alice motions that are brought to the Court.

Judge Gilstrap’s Standing Order can be found here.

About the author:

Scott Yackey is an associate of the Intellectual Property Group in Dykema's Dallas office. Mr. Yackey's practice focuses on intellectual property litigation involving patent, trademark and copyright infringement, as well as the preparation and prosecution of patent and trademark applications. If you have any questions regarding this article, or any other IP-related needs, please contact Scott at or (214) 462-6412.