Good article today analyzing current trends in 101 motions, with a “surprising twist” involving the EDTX. (Okay, if you read this weblog, it’s not going to come as a surprise, but work with me here).
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.
Under the Sesame Street-like “which of this things is not like the other” type analysis required by Enfish for 101 motions to dismiss for lack of patentable subject matter, lately it’s a little news-worthy when the EDTX denies a 101 motion, but that’s what happened recently in a Marshall case. The case involves
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.
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.
Yes, Mr. “Twin Peaks” Giant, it is happening again. Another 101 motion has been granted … in part. And even by the same judge (and almost the same day). In this case,
Two patents and six defendants – are the asserted claims invalid as ineligible subject matter under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank, Int’l, 134 S. Ct. 2347 (2014) or not?
Well, yes, in part. In this case,
Okay, I know the Nintendo Wii “Wonderful 101” and “Alice” images are getting tired, so I just wanted to let readers know in advance that I won’t be using them for the two significant 101 rulings that I’m about to post about. Even though they are pretty wonderful…
I am going to have to license the graphics from Nintendo’s Wonderful 101 and it’s character Alice before this spring is out because they are in pretty heavy rotation with all the 101 rulings coming out. This morning’s focuses, as the opinions all do, on whether the claims are more analogous to the cases where patentable subject matter was found, or where it wasn’t, in, for example, Enfish.
In this case,
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