While you’re enjoying Parker’s perfect snow angel from Tuesday, I wanted to note that the segment of patent litigation that was affected the most significantly by TC Heartland was pharmaceutical cases, and as I discussed in my paper presented in November, one of the potential solutions to the additional venue obstacles is multidistrict litigation (MDL) proceedings.
One recent EDTX case indicates that that perennial bridesmaid in search of a wedding may actually be approaching at least one altar.
Plaintiff filed six patent cases asserting four patents, which were later consolidated. Defendant sought a stay of the consolidated cases, and Judge Gilstrap recently granted the motion as set forth below.
The issue of whether cases should be stayed pending PTAB review of the patent(s) in suit comes up not infrequently. A recent opinion provides the most concise statement of what the Court characterized as its “consistent practice” on this point, as well as providing a good opportunity to explain what this “(Cleaned up)” business is all about.
“Cleaned up” is the current practice, hot in #appellatetwitter circles, of replacing extended explanatory parentheticals required by Rules 5.3 and 5.4 of the Bluebook with a simpler parenthetical that simply says “(cleaned up)” to make it more readable. See #cleanedup. The practice was recently adopted by the Annual Survey of American Law, which provided a useful explanation of the practice.
Typically I use (Cleaned up) to delete all the included citations in a quote, but preserve the included quotation marks for eau de binding precedent, but the quote in this case provided the opportunity to selectively edit the cites to focus on the money cites and quotes, which is a more elegant use of the tool, in my opinion.
I categorically deny that I am shamelessly pursuing a “Cleaned Up Roll of Heroes” certificate from @SCOTUSPlaces like the attached (although it would be nice. I’m just saying).
Earlier today I posted about the situation in which a plaintiff files a patent suit, motions to dismiss (often arguing lack of patentable subject matter under Section 101) are filed, and the cases are dismissed before the motions are resolved. This litigation provides an example of this that later nonetheless resulted in a dismissal on the merits of 101 motions, but also illustrates several other things, including filing trends from 2015-to pre-TCH 2017 as bulk filer cases dropped off, as well as changes in case management locally – against as the bulk filings dropped from 2015 levels.
Defendants sought a stay pending IPR. Judge Mitchell reviewed the relevant factors and determined that a stay was not warranted. First, there was no showing of any case-specific prejudice. Second, the defendants’ delay in filing their IPR peition weighed against a stay, as the motion wasn’t filed until shortly before claim construction briefing was to begin. Third, and most importantly,
Defendants filed a motion for judgment on the pleadings under FRCP 12(c) alleging lack of patentable subject matter in this case, and asked the Court to invalidate the asserted claims on the basis that they are directed to the abstract idea of “offering, tracking, and processing discounts”—a concept Defendants contended is a longstanding commercial practice.
In its opinion, the Court
Requests for stays pending CBM review aren’t as frequent as they once were, but they’re still a crucial issue when they arise. The applicable standards for stays in this context was set forth well in a recent pair of orders by an EDTX court, as analyzed below.
A key issue in motions to stay pending inter partes review is often whether a moving defendant is willing to agree that it will be bound by the statutory estoppel provisions of 35 USC 315 (C). In this case, the court had deferred ruling on the motion to stay until the defendant took a position as to whether it would agree to be stayed. In the attached order,
For defendants with potentially dispositive claim construction issues, an expedited “mini-Markman” with accompanying stay of discovery and other deadlines until after the court considers the disputed claim terms is the Holy Grail of procedural treasures. Yet another group of defendants successfully completed this crusade in the EDTX recently when, as the attached orders show, the court granted an expedited Markman hearing on three disputed claim terms, then stayed all other deadlines in the case until after the hearing.
A question that often arises in deciding motions to stay pending IPR proceedings is to what extent the IPR proceedings will simplify issues. Specifically, does the IPR cover all the asserted claims, and will the estoppel effect of the IPR decision apply to the defendants who did not institute the IPR? Where the IPR covers all asserted claims and the remaining defendants agree to be bound by the estoppel provisions of 35 USC 315, this factor usually favors a stay. This issue was presented in the attached opinion by