Authored by Ann Robl, June 24, 2015 at 9:36 am

A District Court split regarding how courts apply the Alice Corp. decision that recently came to my attention borders on the ridiculous (pun intended). 

The Eastern District of Texas recently posted an interesting sample patent docket control order (hat tip Ryan Davis, Law360) stating, “Parties seeking to file dispositive motions under 35 U.S.C. § 101 before the Court’s Claim Construction Order has issued may do so only upon a grant of leave from the Court after a showing of good cause....” 

Then, in the neighboring Western District of Texas, a Magistrate Judge recommended the following on June 12: 

Denying Defendants' 12(c) motion [for judgment on the pleadings that Plaintiff's portable device media delivery patent was invalid for lack of patentable subject matter] as premature, merely because claim construction has not occurred, is unwarranted. . . . [Plaintiff] has not identified a disputed term requiring construction and has therefore not demonstrated why claim construction is necessary to determine whether the patent claims patent-eligible subject matter. . . . [Plaintiff] argues factual disputes exist regarding what is 'well-known,' 'generic,' or 'conventional' and cannot be resolved under Rule 12. However, the Supreme Court has resolved § 101 patent validity by examining the face of the patent. Thus, the Court only needs to view the patent itself.

(Emphasis Added, Affinity Labs of Texas, LLC v., Inc. et al., 6-15-cv-00029 (TXWD), Summary from Docket Navigator.) 

Gee, this won’t encourage forum shopping, will it? 

Illustrations:  “Giant Alice Upsets the Jury,” Alice in Wonderland, The Project Gutenberg EBook of Tenniel Illustrations for Alice in Wonderland, by Sir John Tenniel (Copyright expired).