I Know you, dear loyal readers, depend upon us for your very sustenance. A week with IP/DE is like a week without the sun, a summer without ice cream, a concert with no encore. The life of a patent lawyer is gray enough without the small indignity of a blog break.
But we have begun our halting return! Andrew reminded me that we were back today, and following some initial cursing that cannot be repeated on even the most bawdy of blogs, we have again taken up the mantle of infotainment resource.
Rejoice!
Today's case is a fun one. Plaintiff in BE Tech. LLC v. Google LLC, C.A. No. 20-622-GBW, D.I. 348 (D. Del. Apr. 16, 2026) had a rocky road to summary judgment. At the motion to dismiss stage --long long ago now -- they'd faced a series of 101 challenges to the patent in suit. In these proceedings, Judge Stark had twice found that one of the claims in the patent in suit was representative and that it failed Alice at step one for being directed to an abstract idea.
The motions were ultimately denied however with the court finding that fact issues precluded a decision on step 2. Defendants ultimately filed IPR's on all of the patents and the case was stayed for some time. The PTAB then invalidated all but one claim of one of the patents -- not the one that the court had previously found representative.
The case resumed and the parties cross-moved for summary judgment on 101 grounds. The plaintiff argued that's the court prior holding that the now-invalid claim was representative, and that all the claims failed step 1, was no longer binding now that the claim was out of the case.
Judge Williams disagreed, ultimately finding that the remaining claim failed both steps and was thus unpatentable:
Plaintiff asserts that the subsequent invalidation of Claim 1 of the '410 Patent means that "the Court cannot consider the invalidated claim as representative of the only claim still remaining in the case, [the Asserted Claim]" and that the Court has no Article III power with respect to Claim 1 of the '410 Patent. However, as the Federal Circuit has explained, "eligibility findings with respect to representative claims only extend to claims for which they are representative .... " As a result, Plaintiff's framing of the issue is misguided. Even though Claim 1 of the '410 Patent is no longer asserted, the holdings regarding Claim 1 of the '410 Patent "extend[ed] to [the Asserted Claim] for which [Claim 1 of the '410 Patent] [was] representative .... "
. . .
Second, Plaintiff asserts that the law of the case doctrine does not apply because "circumstances have changed materially since the Court's prior judgment-most importantly, the representative claim that formed the basis of the Court's decision is no longer part of the case." The Court disagrees. "The law of the case doctrine states that 'when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case."' The purpose of the doctrine is to "to ensure judicial efficiency and to prevent the possibility of endless litigation." "Its elementary logic is matched by elementary fairness- a litigant given one good bite at the apple should not have a second." IPlaintiff is correct that "there is an exception to the law of the case doctrine when new evidence is presented." "This exception to the law of the case doctrine makes sense because when the record contains new evidence, 'the question has not really been decided earlier and is posed for the first time."' I This exception does not apply here, as the purportedly "new evidence" - the invalidation of Claim 1 of the '410 Patent for lack of novelty - has no impact on the previous Alice Step One rulings. Thus, the Court rejects Plaintiffs second rationale.
Id. at 9-10
Tune in next week for more razzle dazzle!
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