12(c) Motion to Dismiss Under Section 101 Denied

Seems like just last week that I summarized where we were on local decisions after the Federal Circuit held that some Section 101 issues were questions of fact.  Oh wait, it was just last week.  Well, we have another one – this time within an order denying a Section 101 motion at the pretrial stage, this time explicitly concluding that there were issues of fact that precluded dismissal as to two of the three asserted patents.

Under the Sycamore Tree (there are pretrial motions)

One of the most haunting moments of the season finale of the original Twin Peaks in 1992 was Jimmy Scott singing Under the Sycamore Trees as things got really, really weird. I think of this song whenever I read opinions in Sycamore IP Holdings v. AT&T, which gave us more to consider recently.  Actually, much, much more.

Analyzing willfulness claims/Section 101 denial/expert opinions excluded in part

It’s often helpful to cut something open to see how it works.  During World War II, the Navy cut open a damaged PBY Catalina flying boat and mounted it on a wall in a training facility in Pensacola to help train sailors who would be crewing its sister craft.  The cutaway PBY was a local fixture from 1944 to 1997, and was eventually moved to the nearby National Museum of Naval Aviation to sit under a fully restored version, where my youngest son Parker (who’s a certified WW II plane nut) got to study it up close.  (That I have a PBY on my work bench at the moment had nothing to do with the trip.  Honest)

Readers will recall that I posted last month that a Marshall jury in Judge Roy Payne’s court returned a verdict last month in favor of Ericsson in a case brought against TCL Communications and set damages at $75 million.  Two of the numerous pretrial rulings in that case were on the defendant’s motions for summary judgment under Section 101, and on the plaintiff’s claims of willful infringement, both of which Judge Payne denied.

Since the 101 ruling runs against the recent trend of more than half of 101 rulings going the defendant’s way, it is worth a review.  But the one I really want to focus on is the willfulness ruling because, as the Court wrote, “it is helpful to explain the standard as it stands today [post-Halo]” which began a metaphorical popping off of the fuselage panels on the standard in order to spend several pages poking around on what the wilfulness standard requires, and what factors need to be considered when deciding whether to bifurcate a willfulness claim.  When you’re done reading it, you might find yourself with the same thought I had after studying the interior of a full-size PBY – I have really not understood how this thing fits together, and I have really screwed up ….

More Redshirts for 101 Motions

2017 has been a golden year for 101 motions in the Eastern District of Texas, with the reported grant rate – at least for the six month period from last fall through this spring – hovering at 75%, compared to 18% in Delaware.  It’s even triple the 25% grant rate during the same period in the Northern District of Texas, according to the below table from Bilksiblog.com.  Last week saw another negative data point on 101 motions for plaintiffs, as Judge Gilstrap granted a 101 motion on one patent – and on a claim that the PTAB had declined to institute review on – 45 days after the motion was filed, and stayed the case as to several others pending PTAB proceedings.

Cases Stayed, 101 Motions Granted

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.

Clash of the 101 Motions: Motion to Dismiss Claims Versus Motion for Summary Judgment as to 101 Defense

Although most 101 defenses are raised via motions to dismiss under 12(b)(6), a few are brought under 12(c), and more than a few are either filed in or converted to the context of summary judgment.  But this case raises an interesting twist with the defendant seeking dismissal on 12(b)(6) grounds and the plaintiff seeking summary judgment that the 101 defense is without merit.  So let’s see how that worked out for them.

EDTX Grant Rate on 101 Motions Up to 75%; Del/ND Cal. 101 Grant Rate Drops to 23%

Fenwick & West’s BilskiBlog had a good summary of the state of 101 caselaw as of the end of Q1 2017 yesterday.  Most notable to me was their observation of the pronounced change in grant rates for 101 motions in patent-heavy district in the last six months.

They compared grant rates from mid-2014 through the third quarter of 2016, and then over the past six months, uncovering two significant trends.  First, the three top districts in terms of rulings that are not the EDTX had grant rates from 65-74%, but those rates dropped dramatically to 18-40% in the last six months.  Excluding CD Cal and only looking at the double digit districts, the rate is 18-25%.

In contrast to its 31.9% grant rate from 2014-2016, however, the EDTX grant rate for 101 motions the last six months has increased to 75%, with 12 of 16 motions being granted.  That is over three times the grant rate in D Del and ND Cal, which are currently at 23%.

The reason for the spike appears to be a batch of grants in March 2017, but the post recognizes that the overall national trend is a downward one nonetheless.