In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.
During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.
The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed "[a]fter the pleadings are closed—but early enough not to delay trial." FRCP 12.
Judge Andrews took a third route—he responded by splitting the defendant's patents from the upcoming trial:
ORAL ORDER: I read the Parties letters. . . . The case is scheduled for a five-day trial. Defendant is asserting four patents. After we have the Markman hearing, I will sever Defendants patent infringement case from Plaintiffs patent infringement case. Without severance, the case cannot be tried in five days, and, in any event, there is too great a risk of jury confusion no matter how long the trial is. The Parties should meet and confer and propose a separate schedule for Defendants case. With a separate schedule, Plaintiffs pending motion . . . and the briefing on it will not delay any trial. And, after looking at three of the four patents . . . , I cannot say that it would be a waste of resources to consider the section 101 issues in the coming months. The parties should also meet and confer and agree to the rest of the briefing schedule on the 101 motion. Ordered by Judge Richard G. Andrews on 12/16/2022.
That's not a result that the parties seemed to contemplate in their letters, and I imagine it could have a significant impact on how the rest of the case goes.
Sure, They Can File—But Did They Just Eat Half of their SJ Pages?
The scheduling order in the case has the usual text about "case dispositive motions":
Case Dispositive Motions. All case dispositive motions shall be served and filed on or before Friday, April 22, 2022. No case dispositive motion under Rule 56 may be filed more than ten days before the above date without leave of the Court. Absent an order of the Court upon a showing of good cause, each side is limited to one forty-page opening brief, one forty-page answering brief, and one twenty-page reply brief for all of its Daubert and case dispositive motions.
One question that often comes up in this context is whether filing a 12(c) motion counts against the page limits for later dispositive motions. Reading the above text, it looks like it should. But it's not unusual for parties to forget about a previous FRCP 12(c) motion and treat SJ page limits as if it had never happened.
Here, the defendant smartly raised the issue in its letter, arguing that the FRCP 12(c) motion should count against SJ motion page limits. The Court didn't address it, but we may see it come up again down the line.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
