Texas Round-Up: December 2025

Our Texas Round-Up for December 2025 covers decisions from the Eastern District addressing subject matter eligibility under Section 101 and the timeliness of expert opinions on non-infringing alternatives.

Web 2.0 Technologies, LLC et al. v. Longview Regional Medical Center, No. 6:25-cv-0059 (E.D. Tex. Dec. 8, 2025) (J. Campbell Barker)

Defendant Longview Regional Medical Center (“Longview”) filed a motion to dismiss against plaintiffs Web 2.0 Technologies, LLC (“Web 2.0”) and Pennar Software Corporation’s (“Pennar”) complaint under 12(b)(1) and 12(b)(6). Id. at 1. Longview argued that Web 2.0 lacked standing to bring a claim for infringement of U.S. Patent Nos. 9,465,913 (the “’913 patent”) and 9,886,594 (the “’594 patent”) (collectively the “asserted patents”) and that the claims of the asserted patents were ineligible under 35 U.S.C. § 101. Id.

Regarding the 12(b)(1) motion to dismiss against Web 2.0 for lack of standing, the court first noted that there was tension between the Federal Circuit’s characterization of standing issues and Supreme Court precedent. The court noted that the Federal Circuit “has characterized the scope of the statutory right to sue as a matter of ‘standing.’” Id. (citing H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1384 (Fed. Cir. 2002)). However, the court noted that the Supreme Court’s precedent held that “‘whether a plaintiff states a claim for relief goes to the merits in the typical case, not the justiciability of a dispute.’” Id. at 1-2 (quoting Bond v. United States, 564 U.S. 211, 219 (2011)). While the court “doubt[ed] that the scope of the statutory right to sue for patent infringement is a matter of standing,” it determined that it “must apply the Federal Circuit’s characterization of the patent-ownership issue as one going to standing and thus resolved under Rule 12(b)(1).” Id. at 2. The court determined that Pennar had retained all rights to the ’594 patent and thus that Web 2.0, lacked standing. Id. Additionally, while Pennar had assigned certain rights to Web 2.0 for the ’913 patent, the assignment listed only “certain defendants.” Id. Longview was not one of the listed defendants, and the court determined that Web 2.0 lacked standing and dismissed its claims without prejudice. Id. at 2-3.

The ’913 patent “is related in general to electronic information repositories, and in particular, to a system and method for gathering, storing and disbursing personal information to authorized entities via a communication network.” Id. at 5 (quotations omitted). Generally, the ’913 patent described a method wherein users would provide personal information at a single virtual location and then authorize the release of that information to desired website services. Id. at 6. The court determined that claim 1 was representative of all claims of the ’913 patent:

At Alice step one, the court determined that the ’913 patent is directed to the abstract idea of “receiving, storing, and controlling access to a patient’s health information.” Id. at 6. The court determined that claim 1 disclosed a “a method of creating a virtual storage folder for a patient, allowing the patient to provide information to that storage folder, storing that information, allowing the patient to control who can access that information, disbursing the patient’s information to parties granted access, recording when information was disbursed, automatically notifying the patient of changes, and allowing access in the event of a medical emergency.” Id. The court found that “[t]hese are nothing more than ‘well-known’ concepts that ‘humans have always performed.’” Id.

The plaintiff argued that the claims were “directed to specific real-world solutions to technical problems” and identified “critical structures,” but the court stated that “mere listing of structures in a claim is insufficient to overcome a § 101 challenge.” Id. “Here, the specification teaches using computers to store, access, and disburse personal health information . . . It does not improve upon computer technology but rather relies on the ‘ubiquity of the public computer networks’” and lists known components of computer architecture. Id. at 9 (internal citations omitted). Furthermore, the claimed structures were high-level, broadly articulated, and result-defined information processing functionality, and “mere automation of processing medical records is still directed to an abstract idea.” Id. at 10.

At Alice step two, the court found that claim 1 included nothing more than functional limitations and that the claimed “server computer” was described using “known, even trademarked, generic components.” Id. at 11. “There is nothing in the ’913 Patent specification that transforms these generic components into something more.” Id. at 12. “As such, the ’913 Patent provides no inventive step under Alice step two.” Id. The court thus found that the ’913 Patent was invalid under both steps.

Finally, the court found that the ’594 patent was invalid for substantially the same reasons. Id. at 13. While the court “d[id] not treat claim 1 of the ’913 Patent as representative of all claims in the ’594 Patent” the court determined that further analysis was unnecessary “due to the striking similarities between claim 1 of each patent.” Id. at 12. The court also noted that the parties did not address the patents separately. Id. at 12-13. The court dismissed Pennar’s claims with prejudice, finding that since Pennar had already amended its complaint once, and because both patents “teach using routine computer equipment to apply an abstract idea,” further amendments would be futile. Id. at 13.

Maxell, Ltd. v. Coretronic Corp., Optoma Corp., No. 5:24-CV-00088-RWS-JBB (E.D. Tex. Dec. 23, 2025) (J. Boone Baxter)

The court granted plaintiff Maxell, Ltd.’s (“Maxell”) motion to strike the defendants’ expert opinions regarding contested non-infringing alternatives. Id. at 1. The court found that the defendants “failed to timely disclose non-infringing alternatives opinions” and did not show that “this failure was substantially justified or harmless.” Id.

Maxell asserted allegations of infringement relating to seven patents against the defendants. On September 18, 2025, the defendants served the Opening Report of Jose Sasian, Ph.D. Regarding Invalidity and Non-Infringing Alternatives (the “Sasian report”). Id. at 2. The Sasian report included opinions on non-infringing alternatives regarding three of the asserted patents. Id. at 1. Maxell asserted that the opinions should be excluded as untimely because the defendants failed to identify any non-infringing alternatives for the patents in response to Maxell’s discovery requests during fact discovery and that the opinions should be stricken as unreliable.

The court analyzed Maxell’s motion under Fed. R. Civ. P. 37(c)(1). Id. at 3 (“A party may not use at trial information it failed to timely disclose under Federal Rule of Civil Procedure 26 unless such failure to disclose is ‘substantially justified or harmless.’”) The court noted that Maxell had served interrogatories on the defendants on November 18, 2024, which included a request asking the defendants to “‘specifically describe each [non-infringing] alternative, state when it became available, [and] describe in detail the basis for [Defendants’] contention that it is acceptable and non-infringing.’” Id. (brackets in original). The defendants objected and then supplemented twice to include non-infringing alternatives for two of the patents and stated that information responsive to the request could be derived from specific documents and deposition transcripts. Id. at 4. Neither supplemental answer identified non-infringing alternatives for three of the patents. Id.

“[A]pproximately one month” after the defendants’ final supplement to the interrogatory at issue, the defendants served the Sasian report. Id. at 4. This report included purported non-infringing alternatives for the three patents that had not been previously addressed in the interrogatory responses. Id.

The defendants argued that including the opinions in the Sasian report was timely disclosure, that providing the theories previously is not something that could have been done or that the defendants were required to do, and that Maxell had no right to their expert’s theories during fact discovery. Id. at 6. However, the court found that Maxell had requested the information via its interrogatory and that the defendants “were obligated to disclose responsive information and to supplement as necessary.” Id. at 6-7. Thus, “the contested non-infringing alternatives were not timely disclosed.” Id. at 7. The court determined that none of the cases cited by Maxell “suggest that an expert opinion on non-infringing alternatives that improperly exceeds the scope of an interrogatory response can survive a motion to strike under Rule 37(c)(1), merely because it was first disclosed in an opening expert report rather than in a rebuttal report.” Id. at 9. “Rather . . . the focus is on whether the defendants properly disclosed the alternative during fact discovery.” Id. The court determined that while “[the d]efendants may be correct that non-infringing alternatives are a ‘proper subject for expert discovery and are not reserved exclusively for fact discovery’ . . . [the d]efendants cite no authority for the proposition that non-infringing alternatives are a matter reserved exclusively for expert discovery or that they need not provide responsive information to an interrogatory seeking information about proposed non-infringing alternatives.” Id. at 11. Additionally, the court determined that nothing justified the view that “‘a party is excused from disclosing a theory during fact discovery simply because their expert thought of a new argument later.’” Id. at 12.

After determining that the disclosures were untimely, the court analyzed whether the failure to disclose was “substantially justified or harmless” under Rule 37(c)(1). The four factors the court considered were 1) the explanation for the failure, 2) the importance of the testimony, 3) potential prejudice, and 4) the availability of a continuance. For the first factor the court found that the fact that the defendants were able to disclose non-infringing alternatives in response to Maxell’s interrogatory for some of the patents undercut their assertion that they could not have done so for the remaining patents. Id. at 13. The court also disagreed that the defendants could not have provided non-infringing alternatives given that the expert had been working on the case long before the close of fact discovery, but also caveated that the court “would be hesitant to fully endorse the concept that a party can justify an otherwise unexcused discovery violation by delaying its engagement with its expert.” Id. Finally, the court reiterated that, while a party is not entitled to expert opinions via interrogatory, the issue was that “[the d]efendants failed to provide any information related to the disputed non-infringing alternatives, including their very existence.” Id. at 13-14 (emphasis in original).

For the second factor, the court — specifically “[w]ithout fully considering the issue of whether [expert’s] opinions are so lacking as to be unreliable” — still found that the conclusory nature of the factual assertions unpinning the expert’s analysis lessened the overall importance of the opinions. Id. at 14-15.

For the third factor, although the defendants argued that Maxell had an opportunity to depose the expert and chose not to, the court determined that the defendants “failed to fully respond to fact discovery to the extent that the interrogatory responses did not require expert testimony” and that the defendants could not attempt to shift the burden onto Maxell. Id. at 15-16. The court also noted that “alternative theories sometimes required fact intensive inquiries” and that Maxell was deprived of the opportunity to test the defendants’ new assertions through the normal course of discovery. Id. at 16.

Finally, for the fourth factor, the court determined that a continuance of the pretrial conference would not cure the prejudice. Id. at 17. The court reiterated that withholding the information until weeks after the close of fact discovery deprived Maxell of the opportunity to probe into the facts relating to the contested alternatives. Id. The court also noted that pretrial disclosures would be starting shortly and “it is not clear how further delays would benefit Maxell.” Id. (internal citations omitted).

The Court thus found that all four of the factors weighed in Maxell’s favor. As a result, all five paragraphs in the Sasian report relating to the disputed non-infringing alternatives were struck. Since the court determined that the opinions were untimely and should be excluded, it did not address Maxell’s argument that the opinions were unreliable. Id. at 2.