Chief Judge Rodney Gilstrap of the US District Court for the Eastern District of Texas issued a new standing order requiring patent-infringement defendants to disclose “eligibility contentions.” Standing Order Regarding Subject Matter Eligibility Contentions Applicable to All Patent Infringement Cases Assigned to Chief District Judge Rodney Gilstrap (E.D. Tex. July 25, 2019) (Gilstrap, J).

In all cases filed after July 25, 2019, and assigned to Judge Gilstrap, defendants are now required to serve “eligibility contentions” no later than 45 days after receiving service of the “Disclosure of Asserted Claims and Infringement Contentions.” This timing aligns exactly with the timing required for invalidity contentions under Eastern District of Texas Patent Rule 3-3. The confluence of timing requirements between P.R. 3-3 and the new standing order suggests that the eligibility contentions are envisioned as part of the invalidity contentions.

The standing order requires that the eligibility contentions include three charts. The first should identify the eligibility exception to which each challenged claim is directed and whether any challenged claim is representative of any of the others. The second chart should describe the relevant industry and explain how each element of each challenged claim, both individually and in combination, was well understood, routine and/or conventional. The third chart should identify any other factual or legal bases for the challenged claims’ ineligibility.

The standing order further requires production of all materials upon which the party asserting ineligibility will rely. The standing order permits amendment of eligibility contentions in response to claim construction, but otherwise only upon leave of court, which requires a showing of good cause.

Practice Note: Under the standing order, the Eastern District of Texas’s invalidity contentions requirement exceeds that of the Northern District of California (after which it was originally modelled). In particular, N.D. Cal. Patent L.R. 3-3(d) requires disclosure of “grounds of invalidity based on 35 USC § 101,” but Patent L.R. 3-4 (“Document Production Accompanying Invalidity Contentions”) does not require production supporting 3-3(d) contentions. Judge Gilstrap has not only set a form and sufficiency standard for eligibility contentions,” but also has required production of “all materials” to support those contentions.

Litigants are likely to be required to supplement contentions to include references to documents, fact testimony and/or expert evidence discovered after the contentions’ date. Litigants should be diligent in identifying evidence that may support ineligibility theories and supplementing contentions accordingly.

In many cases, eligibility contentions will be filed while a motion to dismiss remains pending. While the motion to dismiss should generally be based on the pleadings and asserted patents, eligibility contentions must list extrinsic evidence to which the defendant will be limited for the remainder of the case. Litigants must be careful to give a fulsome disclosure while avoiding the impression that a finding of ineligibility requires resolving factual disputes.