2015
No Welcome Mat for Alice in East Texas After All?
A month ago, we highlighted the case of Clear With Computers v. Volvo Construction Equipment, in which Judge Gilstrap of the Eastern District of Texas granted a defense motion to dismiss for lack of patentable subject matter. We saw the application of Alice v. CLS Bank in a ruling on an early dispositive motion in east Texas as a potential harbinger that the district would join the other courts that have embraced Alice as a useful tool in disposing of cases brought under bad patents early on.
New developments suggest to the contrary. Unlike the District of Delaware, the other preferred jurisdiction for patent–holding plaintiffs—where district judges have regularly applied Alice to grant defense motions to dismiss—two recent rulings from Magistrate Judge Payne hint at a quite different approach in east Texas. In My Health v. Lifescan and Certified Measurement v. Centerprint Energy Houston Electric, Judge Payne has denied or recommended denial of dispositive motions based on the following language: “While handling the issue of § 101 eligibility at the pleading stage is permissible, those issues are often inextricably tied to claim construction. Thus, it seems a definitive ruling on eligibility before claim construction is only warranted in narrow circumstances, making such a ruling the exception rather than the rule.” In each case, the judge went on to conclude that he could not grant a motion to dismiss “where [the defendant’s] invalidity argument is implicitly premised on its conclusions about the meanings of certain claim terms” (emphasis added). He further wrote, “The difficulty of making a substantive ruling on the validity of an issued patent in what is—in essence—a complete vacuum cannot be understated.”
This approach differs from that of the other courts, which have not found it difficult to resolve the issue of subject–matter eligibility on a motion filed before the parties have invested significant time and money. Judge Payne’s approach is, however, consistent with the trend in the Eastern District of Texas of deferring dispositive issues until just before or after trial, after vast amounts of time and money have been spent on discovery and claim construction. If so, east Texas may stand alone once more as the go–to jurisdiction for patent infringement litigation.
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