By Vincent J. Allen.
As discussed in a prior post, the Waco Division of the Western District of Texas has seen a rise in patent infringement suits. Plaintiffs are filing in Waco because of Judge Alan Albright’s promise to efficiently resolve patent disputes. Judge Albright has also made clear that he does not favor dismissal of actions on the pleadings based on lack of patentable subject matter under section 101.
Judge Albright Denies Google’s Section 101 Motion to Dismiss
Judge Albright’s attitude toward early dismissal was confirmed in his recent decision denying Google’s Section 101 motion to dismiss. The patent infringement suit was brought by Hammond Development International in the Waco Division. The plaintiff claims that Google’s smart home systems, specifically its Nest devices, infringe the patents covering a system for remote execution of an application.
Google filed a Rule 12(b)(6) motion to dismiss on the grounds that the representative claims of the lawsuit claim ineligible subject matter. Google argued that two claims of eight different patents were representative and presented arguments only as to those two claims.
Motion Denied Before Arguments Raised on Claim Construction
Without awaiting Hammond Development International’s response, Judge Albright issued an order on September 3 denying the motion. The response was not due until September 10. Citing the Federal Circuit’s MyMail, Ltd. v. ooVoo, LLC decision, Judge Albright denied the motion without prejudice and directed Google to “refile its motion, if it so chooses, after the issuance of the Court’s claim construction order.” Judge Albright further directed Google to brief the patent ineligibility of each asserted claim, not just representative claims,” if Google elected to refile the motion.
Notably, Judge Albright expressly states in his order that “the Court takes no position on whether claim construction is necessary for any of the asserted claims.” The order also states that “the Court takes no position on whether there are any factual disputes that preclude dismissal at the pleadings stage.”
Don’t Expect Early Decision on Section 101 in Waco Division
Generally, courts should refuse to grant a motion to dismiss where claim construction is necessary and/or there are factual disputes related to whether a patent claims patent ineligible subject matter. In the MyMail case cited by Judge Albright, the Federal Circuit reversed a dismissal where the trial court failed to construe the claims of the patent and the plaintiff complained of this failure. Similarly, in the Aatrix case cited by Judge Albright, the Federal Circuit reversed a dismissal where relevant factual allegations were disputed.
In the instant case, however, Judge Albright did not wait for these issues to be briefed, but instead made the decision to postpone any decision on the merits of Google’s arguments until after claim construction. So while Judge Albright will run an efficient docket, defendants should not expect a case to be dismissed on section 101 grounds until after claim construction in the Waco Division. If factual issues are raised in the pleadings, then Judge Albright will likely require the issue to be raised by way of a motion for summary judgment.
*Vincent Allen is a partner focusing his practice on intellectual property litigation and management of IP portfolios. He earned his law degree from Baylor Law School in Waco, where the firm recently opened an office. If you need help with patent litigation in Waco or elsewhere, please give Vincent Allen a call at 972-367-2001 or send an email to firstname.lastname@example.org.
**Note about artwork. I was looking for an image to include with this blog post. My 9 year old daughter Mae came in and asked me what I was doing. After telling her and explaining what “motion denied” meant, she said, “I can draw a cartoon for you!” Not sure where the cat came from, but I was impressed. She’s available to work on commission she says.