This order was just issued in a case that is fast approaching trial. In it, Judge Gilstrap granted two Section 101 motions with respect to numerous claims of three of the four patents asserted in the case, but denied it as to five claims across two of the patents, and provided additional instructions regarding how the remaining claims would be handled.
I’m over the river in Oklahoma today at the EDTX bench bar planning meeting, but that’s no excuse not to post on another detailed order from Franklin Avenue – Judge Albright’s third on patentable subject matter.
I thought superdetailing the 1/200 CSM and LM for my Apollo 11 Saturn V was painstaking – until I read the attached 32 pages of findings of fact and conclusions of law on a defendant’s assertion that four claims were invalid as being directed toward ineligible subject matter. The Court concluded that one claim was invalid, but the other three were not. If you’re interested in detailed Section 101 analysis – this is the order you want. On the other hand, if you’re interested in scratchbuilt models of NASA hardware … I highly recommend you look into golf or fishing instead.
Following the addition of U.S. District Judge Jeremy Kernodle to the Eastern District of Texas bench late last year, most of the Tyler docket, including this case, was reassigned from Judge Gilstrap and Judge Schroeder to Judge Kernodle. Judge Kernodle just entered an order denying the defendant’s renewed motion to dismiss for failure to state a claim which argued that the patents in suit claimed ineligible subject matter.
The tempo is picking up on Judge Albright’s Waco patent docket, with this order last week denying a motion to dismiss that raised a patentable subject matter defense.
Section 101 motions asserting lack of patentable subject matter are sometimes brought as motions for judgment on the pleadings under FRCP 12(c). After reading this order, I think I might reconsider whether that’s a good idea.
Section 101 rulings are always welcome because they show where judges are on specific fact patterns based on the current state of the appellate caselaw. Normally I’d say that the facts are the variable, not the caselaw, but on this subject the first can vary, and the second can … evolve. This week provides another data point on 101 rulings, with an opinion that drops findings into the no/no, no/yes, yes, and “nope” categories.
A Texarkana jury in Judge Schroeder’s court returned a verdict in favor of Maxell against defendant ZTE (USA), Inc. last Friday following a two-week trial. The jury found all 16 claims from the 11 asserted patents infringed. Eleven of the claim from seven patents were found to be infringed willfully. The jury found that four claims across two patents had not been shown to be invalid as anticipated or obvious (one question for all invalidity theories), and assessed damages at $43.3 million. But the jury also made an additional finding in the defendant’s favor with respect to five of the claims that bear some closer scrutiny, as it begins to tell us how 101 claims can be addressed in front of a jury. This reminded me of how Judge Schroeder addressed a similar issue dealing with contract formation in my April jury trial in Texarkana, so I wanted to address that issue in some additional detail (as well as a few others) by analyzing the court’s instructions to the jury.
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.
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.