For nearly two decades, the Eastern District of Texas has been a hotbed of patent litigation. Even after the Supreme Court’s 2017 TC Heartland decision narrowed a plaintiff’s venue options, the Eastern District of Texas still sees more patent infringement cases than almost any other jurisdiction. It has controlled its docket by, among other things, adopting local patent rules that require early disclosure of Infringement and Invalidity Contentions. For example, Patent Rule 3-3 requires each party opposing a claim of patent infringement to serve Invalidity Contentions detailing the party’s allegations that each challenged claim is invalid under 35 U.S.C. §§ 102, 103 or 112. Last month, Chief Judge Gilstrap augmented this rule with a standing order that requires a party to serve “Eligibility Contentions” if the party intends to allege that any claim is directed to unpatentable subject matter.

Under the standing order, a party’s Eligibility Contentions are due at the same time as its Rule 3-3 invalidity contentions and must include:

• Charts identifying:
  1. The eligibility exception to which the challenged claims are allegedly directed (e.g., abstract idea, law of nature or natural phenomenon) and the factual and legal bases supporting that contention.
  2. The industry in which each challenged claim was allegedly well understood, routine and conventional, and a description of how each element of each challenged claim (individually or in combination with the other claim elements) was well understood, routine and conventional in that industry at the relevant time, as well as the factual and legal bases supporting those contentions.
  3. Other factual or legal bases for how the challenged claims are otherwise ineligible for patent protection.
• Detailed information about, and production of, all materials on which the challenger intends to rely.

Like a party’s Invalidity Contentions based on Sections 102, 103 and 112, Eligibility Contentions may be amended without leave of court only within 50 days of the court’s claim construction ruling and only if either (1) a party files Amended Infringement Contentions pursuant to Patent Rule 3-6(a) or (2) the party challenging subject matter eligibility believes in good faith that the court’s claim construction ruling requires amendment of the contentions. Any other amendment to a party’s Eligibility Contentions may be made only with leave of court upon a showing of good cause.

Practice Tip: Defendants should evaluate their subject matter eligibility positions carefully as soon as possible after being served with a patent infringement complaint and should understand that, as with contentions asserting other grounds for invalidity, the ability to amend Eligibility Contentions will be limited.