As we discussed earlier this week, Judge Stark's last § 101 day (maybe ever) was a real coup for the patentees, with all 6 patents surviving. This is, of course, the ultimate continuation of a years-long trend in these hearings with § 101 motions facing harsher and harsher odds.
What we at IP/DE have not discussed is how this trend compares to the averages for our other judges. Running the numbers on the 10 most recent rule 12 motions on 101 issues, the results are as follows:
Judge Connolly issued an interesting opinion this week granting summary judgment of invalidity as to the three patents-in-suit under § 101, despite competing expert testimony regarding conventionality.
Similar to Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015), the patents at issue in CareDx, Inc. v. Natera, Inc., C.A. No. 19-567 (CFC) (CJB), D.I. 183 (D. Del. Sept. 28, 2021) were directed to detecting a natural phenomenon -- here cfDNA in blood that signified a likely transplant rejection. The dispute between the parties thus largely focused on step two of the Alice framework and whether the method described in the patent was merely the application of well-known …
On Monday, Judge Andrews addressed a plaintiff's attempt to cure a § 101 dismissal by amending its complaint—certainly not something you see every day.
Earlier in the case, Magistrate Judge Fallon issued an R&R concluding that one of the asserted patents was directed to ineligible subject matter. Judge Andrews adopted the R&R and granted dismissal without prejudice.
The plaintiff then filed an amended complaint, which contained "eight new paragraphs with allegations . . . tout[ing] the supposed advantages and improved methods of the" previously dismissed patent.
Judge Andrews found that these allegations were not enough to avoid dismissal, granting partial dismissal of the amended complaint with prejudice:
These allegations do not resolve the issues that the Magistrate Judge …
Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.
The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.
Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:
Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.
Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …
