101 Motion Denied w/o Prejudice Pending Claim Construction; Case Stayed Pending CBM Review

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

Court Sets Expedited Mini-Markman; Stays Discovery Deadlines

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.

Judge Gilstrap Sets Standards for Conditioning a Stay on Estoppel Agreement

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