Are You Sure That’s What You You Want to Do?

In my recent thesis I pointed out the importance of knowing what the court-ordered limits on activity in your case are. This order by SDTX Judge Sim lake brings that into sharp focus. The court noted that the defendant had filed a motion to dismiss and suggested that they think hard about that – because under his procedures it would mean they could not later file a motion for summary judgment.

Motion to Reconsider Grant of Summary Judgment Granted

Judge Hanen granted the motion to reconsider (coincidentally by plaintiff Backoff) and revised his order. Agreeing that he had erroneously compared the accused device with the figures in the patent, not the claims, he concluded that with that comparison excluded there were fact issues as to literal infringement as well as infringement under the doctrine of equivalents.

World’s Shortest Section 101 Dismissal

In fairness, it was with leave to replead, directing the plaintiff what to include, if it can. But there is no analysis explaining why the court concluded that the claims of the patent “as currently pleaded” didn’t meet either of the Alice steps – only a statement that what the plaintiff should include is express factual allegations “that address whether the claims recite elements that are well-understood, routine, or conventional.”