Letter Request Requirement in East Texas Takes An Absurdist Turn

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Letter Request Requirement in East Texas Takes An Absurdist Turn


We’ve written before about the unique requirement some judges in the Eastern District of Texas impose on accused infringers, requiring them to obtain leave of court before filing a motion testing the patent–eligibility of an asserted patent under Alice v. CLS Bank. This requirement makes it harder for accused infringers to get a dispositive issue decided early in the case—an outcome that has the potential to save significant court and party time. In the words of Judge Mayer of the Federal Circuit,

Addressing 35 U.S.C. § 101 at the outset not only conserves scarce judicial resources and spares litigants the staggering costs associated with discovery and protracted claim construction litigation, it also works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents.

OIP Techs., Inc. v. Amazon.com, Inc., 2015 WL 3622181, *4 (Fed. Cir. June 11, 2015) (Mayer, J., concurring).

Just how hard it could prove to get the Alice issue decided in the Eastern District of Texas before the costs of litigation mount to unsustainable levels was demonstrated this week. In the case of Advanced Marketing Systems v. CVS Pharmacy, the defendants filed a letter brief requesting leave of court to file an Alice motion on July 23, 2015, before even answering the complaint or moving to dismiss. The defendants then filed an unopposed motion to stay discovery and continue all deadlines pending resolution of the Alice issue. To be clear, the plaintiff did not oppose the requested stay.

On August 19, 2015, Magistrate Judge K. Nicole Mitchell issued two orders. In the first order, she denied the unopposed motion for a stay, reasoning:

Defendants assert that a stay of this case pending resolution of the § 101 issues will avoid unnecessary expense and resources if they are permitted to file their motion and it is granted. Notably, however, the dispositive motion has not yet been filed. Stopping the forward progress of this case before the motion is even filed or considered is counterproductive. The statutory subject matter issues Defendants seek to raise will be considered in due course.

That is, the court would not enter an unopposed stay because the accused infringers had not yet filed a motion that they had not yet received permission to file.

In the second order, issued later the same day, “due course” proved to be short. The judge granted the accused infringers’ request to file an Alice motion. The timing of the orders, however, ensured that discovery would roll on while the motion was briefed, argued, and eventually decided.

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