The 101 day has been the highlight of the Delaware patent law hearing calendar for many years now. It's an all-day no-holds-barred marathon where questions can come to any party at any time. And the best part is, you can look forward to a decision at the end of the day. It is our Super Bowl and our debutante ball all in one, where Delaware's brightest stars go to see, and be seen.
Naturally, I always attend.
I had been a bit worried that the practice would not survive Judge Stark's departure. Although other Judges have adopted the practice to some extent, Judge Stark (the progenitor of the practice) had always been the most reliable host for the event.
Judge Burke Revives the Practice with his own Flair
But my fears were laid to rest last week when Judge Burke—who frequently presided with Judge Stark over 101 days past -- held his first solo 101 day. The procedure would have been instantly familiar to any who attended such a hearing under Judge Stark. The same requirement that a party be present for the whole day, the same recess after argument until late afternoon when the Court reads its rulings from the bench.
There were however some small differences, most notably to the pre-hearing checklist, with Judge Burke requiring the following submission from parties in each of the cases prior to the hearing.
on or before July 1, 2022, each party in each of the above-captioned actions shall file a letter that includes responses to the following questions, of no more than two paragraphs per question: (1) Which Supreme Court or Federal Circuit case is most similar to the challenged claim(s)? That is, each party is to identify which case provides the best analogy if this Court is to compare the claim(s) at issue in the relevant Section 101 Motion to claims previously found to be patent (in)eligible by a higher court.; (2) How do you reconcile the fact that to avoid being an abstract idea, a claim must not be to a "disembodied concept" and instead must be to a concept tethered to "real-world application[,]" see CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (Lourie, J., concurring) (internal quotation marks and citations omitted), but on the other hand, just because a claim might include a large number of concrete, tangible components, that does not necessarily mean that the claim is not abstract, see Yu v. Apple, Inc., 1 F.4th 1040, 1042-45 & n.2 (Fed. Cir. 2021); see also In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)? In other words, what is your view about what it means for a claim to have a sufficient "real-world application" in the Section 101 context?; (3) When a court is figuring out what a claim is "directed to," what are the permissible tools that the court can use as part of that analysis?; (4) How is the "conventionality" analysis in Section 101 law different from that in a Section 102/103 analysis?
WSOU Investments, LLC v. Netgear, Inc., C.A. No. 21-1119-MN-CJB, D.I. 70 (D. Del. June 24, 2022).
The first question on the closest Federal Circuit case is essentially identical to one that appeared on Judge Stark's old 101 day checklist. The other three however are new Burke innovations that I have not previously seen asked in advance of any hearing.
And the Results?
As with many recent 101 days, this one was a tough one for the movants. Of the four motions, three were denied. Two failed at step one for failing to show the claim was directed to an abstract idea. In the third, the step one analysis was "murky" and thus the Court assumed for the sake of argument that the claim was directed to an abstract idea, but then found that it passed step two.
The lone (partial) victory for the accused infringer was in the final case argued, where the Court found that the representative claim was directed to the abstract idea of hedging risk and added nothing new. However, Judge Burke hesitated to find that the claim was truly representative of 27 other asserted claims across 7 patents given the understandably very sparse briefing from either side on those claims, but noting that:
the Court has little doubt that this will provide some guidance to parties as to whether other asserted claims of the other asserted patents really are meaningfully different than the '430 patent's asserted claims.
The Court has yet to issue written versions of all of these rulings (typically these consist of a preamble and then an excerpt of the relevant portion of the transcript), so consider the above a sneak preview until we have the relevant orders.
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