A Blog About Intellectual Property Litigation and the District of Delaware


Objections to Reports and Recommendations are something like an appeal. The District Judge is tasked with addressing the alleged errors of the Magistrate Judge de novo only to the extent they are "properly objected to." Fed. R. Civ. P. 72(b)(3). Thus, it is the job of the parties to raise objections to an R&R in a procedurally proper way. If they fail to do so, the District Judge is hamstrung to an extent. This outcome was on display in a recent ruling by Judge Andrews, in which both sides failed to properly object to a portion of the Magistrate Judge's R&R, leaving a patent with "serious" validity problems alive (for now).

Earlier this year, Magistrate Judge Burke issued an R&R recommending denial of the defendant's motion to dismiss for patent ineligibility under Section 101. Judge Burke assumed - but critically, did not find - that the patent was directed to an abstract idea (step 1 of the Section 101 analysis). He then found that a factual dispute precluded a ruling regarding whether the patent disclosed an inventive concept (step 2 of the analysis).

The defendant objected to the R&R, but rather than objecting to the lack of a finding that the patent is directed to an abstract idea, the defendant "treat[ed] the Report's assumption as a finding." In other words, the defendant did not view the R&R's lack of a finding "as an obstacle to be overcome in its Objections."

The plaintiff did not file its own objections, but did object to Judge Burke's assumption in its response to the defendant's objection. Unfortunately - as Judge Andrews noted - a response "is not the place to be making such an objection."

Without any timely filed objection to Judge Burke's abstract idea assumption, Judge Andrews was left with an R&R that did not make a finding on that issue. And although he saw a "serious question of patent eligibility," he could not grant the defendant's motion to dismiss "[w]ithout a finding that the patent is directed to an abstract idea."

Judge Andrews adopted Judge Burke's R&R and denied the motion to dismiss.

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