A Blog About Intellectual Property Litigation and the District of Delaware


In response to early Section 101 motions, plaintiffs often assert that claim construction is necessary before a ruling on patent eligibility can occur. For plaintiffs looking for quick settlements and dismissals, avoiding an early ruling on Section 101 is a win. In most cases, successfully arguing that claim construction is required pushes the timeline out for resolution of Section 101 issues substantially. That is not always true, however. Judge Stark recently ordered an "expedited Markman proceeding" on terms the plaintiff had identified during Section 101 briefing, short-circuiting the usual process and setting up a possible second round of Section 101 motions.

Judge Stark had noted at the Section 101 hearing that he thought claim construction was necessary to resolve the question of patent eligibility, and asked the parties to propose a schedule for presenting the relevant claim construction issues. The plaintiff argued against expedited Markman proceedings, because (in plaintiff's view) fact issues would remain regardless of what claim construction was adopted. Judge Stark sided with the defendants, who sought expedited treatment:

IT IS HEREBY ORDERED that the Court ADOPTS Defendants' proposal for an expedited Markman proceeding, to allow the Court to construe the three claim terms identified by Plaintiff as requiring construction prior to a decision on patent eligibility, to be followed (if necessary) by additional proceedings, including the potential of a renewed Section 101 motion.

Moxchange LLC v. Avigilon USA Corp., C.A. No. 20-1440-LPS (D.I. 29); Moxchange LLC v. ALE USA Inc., C.A. No. 20-1123-LPS (D.I. 27).

He also adopted the defendants' briefing schedule and set a hearing for June 2021 (about ten months earlier than the Markman hearing for the remaining terms, under the parties' proposal).

The plaintiff won't be happy about having to spend time and money on claim construction this early in the case, but ultimately it may not matter. One of the two cases in which this oral order was entered has been voluntarily dismissed (possibly due to settlement), and the other may not be far behind.

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