Patent Case Stayed Pending Mandamus Decision – But Not Pending IPRs

Earlier today Judge Gilstrap granted a motion staying a consolidated patent case pending the resolution by the Federal Circuit of a mandamus petition that has been filed in another case.  The Court declined to stay the case pending resolution of two IPR proceedings. The ruling is worth studying because of what the motion sought, as discussed below.

Hatch-Waxman Cases, MDL Panels & Stays

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.

Stays Pending IPR & “(Cleaned up)”

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).

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.

Motion to Stay Pending Resolution of IPR

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,

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