District Courts respond in various ways to the increase in pretrial motions based on Section 101, patent eligibility. Here is a look at the practices of some of the districts with the most active patent dockets.
In the District of Delaware, Judges Stark and Burke instituted periodic “Section 101 Day” hearings. On November 16, 2018, Judge Stark ordered the first “Section 101 Day” in the Court’s history to deal with the numerous motions challenging patent-eligibility. Judge Stark ordered each party, in eight separate pending matters, to file a letter brief responding to questions in a provided “Section 101 Motions Pre-Hearing Checklist” (not to exceed three pages). Additionally, Judge Stark ordered counsel for each party to be available for the entire hearing day, held on February 8, 2019, before Judges Stark and Burke jointly. After the success of the first “Section 101 Day,” a second 101 hearing day was conducted before Judges Stark and Burke on June 18, 2019. Moving forward, it is likely this procedure will continue to be utilized when the Court has a substantial number of pending 101 motions.
In the Eastern District of Texas, Chief Judge Rodney Gilstrap recently issued a standing order requiring “eligibility contentions” from defendants early in litigation. Judge Gilstrap’s order complements local patent rule 3-3 invalidity contentions based on anticipation, obviousness, and Section 112. The “eligibility contentions” requires defendants to identify the judicial exception to eligibility and the factual and legal basis in support with respect to each challenged claim.
Other districts, such as N.D. Cal. (LPR 3.3(d)), D.N.J. (LPR 3.3(d)), S.D.N.Y and E.D.N.Y. (LPR 7), currently include invalidity under Section 101 as part of the required Invalidity Contentions.
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R Touhey Myer focuses his practice on litigating complex patent matters before the United States District Court for the District of Delaware. Additionally, Touhey practices before the USPTO, prosecuting patent, and trademark matters. Touhey has particular experience evaluating the market value of patent portfolios to determine the viability of litigation campaigns for his clients. Before joining Offit Kurman, Touhey served as an Assistant Solicitor for Montgomery County, Pennsylvania and Managing Partner of the Delaware Office for a boutique patent firm based in Philadelphia. An active member of the local intellectual property community, Touhey serves as the President-Elect for the Philadelphia Intellectual Property Law Association (PIPLA).
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