A Blog About Intellectual Property Litigation and the District of Delaware

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The District of Delaware is extremely busy. Sometimes clients and out-of-town counsel are surprised that they probably won't get rulings on their motions in the very-short-term. This often prompts questions like "Can we call the Court and ask them to rule on our motion?"—the answer to which is "no."

But in some instances parties really do need to alert the Court to a situation on the ground in the case that is impacted by a pending motion. The answer then is often to file a letter, which sometimes works.

We saw another successful letter this week. In Bataan Licensing LLC v. DentalEZ, Inc., C.A. No. 22-238-GBW (D. Del.), the defendant moved to dismiss on § 101 grounds, and then, shortly thereafter, moved to stay pending resolution of the motion to dismiss.

That was back in October, about 3 months ago. Meanwhile, the case has been trucking along before Judge Williams, and the benefit of the motion to stay has been rapidly declining.

Delaware counsel decided to risk a skillfully-drafted letter asking the Court to rule on the motions to dismiss and stay before the parties have to do more work:

Dear Judge Williams:
I write on behalf of Defendant DentalEZ, Inc. regarding the status of this case in light of upcoming deadlines and case events. In particular, DentalEZ’s preliminary invalidity contentions are due January 13, 2023, and the claim construction process is set to begin on March 23, 2023 (D.I. 30, 43).
In light of these deadlines, DentalEZ wishes to alert the Court to its pending Motion to Dismiss under 35 U.S.C. § 101 that was filed on April 22, 2022 (D.I. 14) and its Renewed Motion to Stay Pending Resolution of the Motion to Dismiss that was filed on October 10, 2022 (D.I. 38). Briefing on the Motion to Dismiss was completed on June 27, 2022 and briefing on the Renewed Motion to Stay was completed on October 31, 2022.

Typically I might say there is no need to alert the Court to a motion that was filed on the docket, and fairly recently. But the options for what to say here are somewhat limited. "Judge, please grant our motion already, it has been like three months" seems ill-advised.

In any case, it looks like the letter worked! The parties filed the letter on Friday, and Judge Williams granted the motion on Tuesday, with no negative reaction apparent from the opinion or docket. Well done! That's potentially a lot of effort saved for the client.

It's good to remember that this option is out there, and maybe it's not as risky as is commonly believed. Personally, I'd still be inclined to use these letters sparing (if at all), in limited contexts and before only some of the judges.

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