Digital Downloads Aren’t “Articles”; New Rules For Alice In East Texas

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Digital Downloads Aren’t “Articles”; New Rules For Alice In East Texas


A couple more newsworthy items to report on this week:

* In a closely watched case in the Federal Circuit, a split panel of that court has held that the International Trade Commission does not have jurisdiction to protect against alleged patent infringement based on “importation” by digital download. Over a vigorous dissent from Judge Newman, Chief Judge Prost, joined by Judge O’Malley, held that the ITC’s authority to protect against the importation of “articles that infringe” a U.S. patent was limited to physical “articles,” and did not include digitally downloaded software. As noted by Patently O, Chief Judge Prost was unsparing in her criticism of the ITC for misquoting the legislative history of the code section in dispute, omitting the words “in the importation of goods,” language which went to the heart of the legal issue facing the appellate panel. The majority also took issue with the ITC’s selective misapplication of dictionary definitions of “article,” which “represent[ed] a systematic pattern of the Commission picking the wrong conclusion from the evidence.” In concurrence, Judge O’Malley noted that the ITC appeared to be attempting, improperly, to claim jurisdiction over the Internet, and made clear her view that this was overreaching on the part of the trade agency.

* Meanwhile, in east Texas, Judge Gilstrap has revised his approach to motions to dismiss (or for judgment on the pleadings) under Alice v. CLS Bank—that is, motions arguing that a patent was improperly granted to ineligible subject matter under 35 U.S.C. § 101. In a newly issued standing order, the judge with one of the heaviest patent dockets in the nation has reversed field on his former practice of requiring parties to include in docket control orders of patent cases a provision “requir[ing] leave of court to file a § 101 motion in advance of claim construction.” [HT: EDTexweblog.com for calling this new order to our attention.]

Under the new procedure, there is no pre–filing leave required to file a motion under Section 101 and Alice; but any such motion filed before the entry of a claim construction order must contain a certification from lead counsel for each party that they have met and conferred “one–on–one” “in person or telephonically” “with no others advising, interjecting, or otherwise participating in such communication. “ The topic of this tête–à–tête is whether claim construction is required to resolve the Section 101 issue. The certification must state either an agreement that claim construction is not required or that the parties disagree on whether it is needed. In the event of (the inevitable) disagreement, the parties must submit a joint letter, two pages per side, setting out their positions on claim construction and why it is or isn’t needed to resolve the motion. The Court will then consider that information in deciding how to manage the docket in that particular case.

Time will tell whether this certification procedure will simply further delay decision on these early–case dispositive motions by creating claim construction side–shows. More optimistically, this provision could be used, in conjunction with other tools of the Court, such as a short–term stay of or limit on discovery, to get these dispositive issues decided more quickly, saving the Court and the parties considerable time and expense.

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