Alice Needs A Judicial Visa To Enter East Texas

East Texas continues to stand out among federal judicial districts for its (contrarian) approach to patent cases. Where the judges in other judicial districts have found the Supreme Court opinion in Alice v. CLS Bank a useful tool to use early in cases to weed out patents that shouldn’t have been granted—you can see a list of examples from last year here—the judges in the Eastern District of Texas have not.

First, as we reported, Magistrate Judge Payne issued recent rulings tying the Alice issue—whether the subject matter of the patent was eligible for patenting in the first place—to claim construction, and ruling that the question can’t be reached (except in rare cases) until after the whole expensive and time–consuming machinery of claim construction has been deployed.

Now, Judge Gilstrap, it would appear, has effectively codified this practice. In a paragraph of Additional Requirements of a sample docket control order published on the court’s website here, parties will find the following directive (our emphasis):

Motions under 35 U.S.C. § 101:  Parties seeking to file dispositive motions under 35 U.S.C. § 101 before the Court’s Claim Construction Order has issued may do so only upon a grant of leave from the Court after a showing of good cause, which shall be presented through the letter briefing process described above.  Parties may file dispositive motions under 35 U.S.C. § 101 without leave from the Court within two weeks of the issuance of the Court’s Claim Construction Order without use of the Court’s letter briefing process described above.

[Hat tip to Law360 (subscription required) for flagging this paragraph.]

In other words, although the Federal Circuit has held that the Alice issue may be presented in a motion to dismiss filed before a party even answers the complaint, under this language, the court would not entertain that motion unless and until the moving party got permission (because the court cannot issue a claim construction order until long after an accused infringer has answered). This order ratchets up the tension between the pre–answer motion practice authorized by Federal Rule of Civil Procedure 12(b)(6) and the court’s permission–slip practice codified in this docket control order. Whether and how that tension gets resolved, it seems clear that Alice motions are less welcome, if not unwelcome, in east Texas.