United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSRAP UNITED STATES DISTRICT JUDGE
the Court is Defendants' Motion for Entry of a Model
Order Focusing Patent Claims and Prior Art to Reduce Costs,
and Temporary Stay of Proceedings Pending Plaintiff's
Election of Claims (Dkt. No. 162) (“the Motion”).
Having considered the same, the Court finds that said Motion
should be and hereby is DENIED WITHOUT
Plaintiff filed this case on August 31, 2016, alleging patent
infringement against FedEx Corporation (“FedEx
Corp.”), Federal Express Corporation (“FedEx
Express”), FedEx Ground Package System, Inc.
(“FedEx Ground”), FedEx Freight, Inc.
(“FedEx Freight”), FedEx Custom Critical, Inc.
(“FedEx Custom Critical”), FedEx Office and Print
Services, Inc. (“FedEx Office”), and GENCO
Distribution System, Inc. (“FedEx Supply Chain”)
(collectively, “FedEx” or
“Defendants”). (Dkt. No. 1.) The allegations in
this case now span five patents, numerous claims, and at
least two-dozen products. (Dkt. Nos. 165; 142.)
November 28, 2017, Defendants filed the instant Motion
seeking to have the Court enter a Model Order Focusing Patent
Claims and Prior Art to Reduce Costs (“the Model
Order”) and then to stay the case for at least thirty
days so that the Parties can comply with the Model Order.
(Dkt. No. 162 at 1.)
courts have inherent power to manage their own docket.”
Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1321 (Fed. Cir.
2016). This includes the power to adopt rules,
such as case management orders, to facilitate the
“just, speedy, and inexpensive disposition” of
argue that this case is “precisely the type of
cumbersome lawsuit the Model Order was intended to
corral” and thus entry of the Model Order, along with a
stay to comply with the Model Order, is necessary. (Dkt. No.
162 at 4.) Plaintiff responds that it intends to limit its
asserted claims in this case after it can evaluate the
Asserted Patents in light of the Court's recent Claim
Construction Order and the Parties' expert reports, and
thus entry of the Model Order is unnecessary and
Defendants' objection is premature. (Dkt. No. 169 at 2.)
maintain that Plaintiff has either defied or taken positions
that conflict with the Model Order. (Dkt. No. 162 at 1, 4.)
However, the Court has not entered the Model Order, nor does
it traditionally enter such an order at this stage of a case.
In fact, the Model Order itself contemplates being submitted
“by the deadline for submission of proposed docket
control or discovery orders, but in no event later than the
deadline for service of initial disclosures.” Model
Order at 1 n.1. Moreover, Defendants have not pointed to a
single case in which this Court, or any other, entered the
Model Order under similar circumstances. Instead, Defendants
rely on Judge Bryson's discussion of the Model Order in
Allergan, Inc. v. Teva Pharms. USA, No.
2:15-cv-1455, Dkt. 265 (E.D. Tex. Jan. 26, 2017), a case that
is entirely distinguishable from the present one. In
Allergan, there were many more claims at issue (126)
and the Parties had already essentially agreed to a schedule
for reducing the claims at issue. Allergan, No.
2:15-cv-1455, Dkt. 265 at 2-3.
the Model Order may, in appropriate circumstances, provide
useful guideposts at the outset of litigation in reducing
claims as a case develops, at this point the Court finds that
it is not the best vehicle to narrow the claims to be
presented at trial. The Court has construed the Asserted
Patents (Dkt. No. 165) and fact discovery is essentially
closed (Dkt. No. 135). Both of these events will only
accelerate the natural narrowing of claims that occurs at
this stage of the trial process. See, e.g., (Dkt.
No. 169 (“[I]t appears that a handful of claims can be
dropped in light of the Court's claim constructions along
with (still) ongoing discovery . . . .”).)
reasons set forth herein, Defendants' Motion is
DENIED WITHOUT PREJUDICE. However, the Court
ORDERS the Parties to immediately meet and
confer in a serious and good faith effort to narrow the
number of asserted claims and prior art references. The
Parties shall continue to meet and confer on an on-going
basis for this purpose through the close of expert discovery.
At such time, if the Parties believe that an appropriate
narrowing of the asserted claims and prior art references has
not occurred, then the Parties may seek appropriate relief
from the Court. The Court often sees, in this type scenario,
that judicial restraint forces a greater degree of
interaction between the Parties, and the result of their own
efforts to narrow the case produces a better result than the
Court's direct insertion into the process might yield.
Therefore, the Court intends to insist that the Parties
follow the above path, until it feels forced to directly