As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.
I don't want to be that man.
But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.
[Insert seamless transition to legal analysis here, then remember to delete this before posting]
This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.
The plaintiff then moved for a 5 week extension of its deadline to respond, arguing that it could not reasonably address the 101 motion until it saw the defendant's claim construction briefing:
This extension is warranted because any Alice analysis in SurgeTech’s opposition brief will be predicated on SurgeTech’s understanding of Uber’s arguments and support for its constructions of the disputed claim terms. Likewise, the Court’s ultimate determination regarding Alice issues will hinge on its interpretation of claim scope. Indeed, it is impossible to determine whether a claim is directed towards “patent-ineligible subject matter” or whether it recites an “inventive concept” without first establishing the proper scope of the claim. Thus, SurgeTech should at least be afforded an opportunity to understand Uber’s claim construction positions before filing its opposition brief addressing Alice issues.
Id., D.I. 68 at 1.
They argued that this was especially true because the defendant was alleging that several claims were indefinite, and that this position could not be reconciled with a finding of unpatentability:
Uber argues that several of the claim terms are “indefinite”—that is, that certain terms cannot be defined because they “fail to inform with reasonable certainty” the scope of the invention . . . This begs the question: how is the Court to determine whether the claims are directed towards “patent-ineligible subject matter” or recite an “inventive concept” if, as Uber argues, they cannot be defined? Thus, the claim constructions for at least these terms is a gating issue.
Id. at 2.
The motion initially read a bit odd to me because the vast majority of 101 motions are filed without the benefit of Markman briefing, but you can see the efficiency angle here. It's pretty common to see parties argue there's some factual claim construction issue that needs to be decided first (and it seems pretty clear plaintiff was going to argue that). With the case on the very cusp of Markman it might make sense to just eliminate the issue before moving forwards.
Judge Williams, however, was unswayed:
[I]t is HEREBY ORDERED that Plaintiff's Motion for Extension of Time to Respond to Uber's Motion for Judgment on the Pleadings is DENIED. Rule 6(b)(1)(A) of the Federal Rules of Civil Procedure permits a court, "for good cause," to "extend the time" that a party has to complete "an act." In order to establish good cause pursuant to Rule 6(b)(1)(A), the moving party must demonstrate that it cannot reasonably meet the court's deadlines despite its diligence. . . . Here, Plaintiff has failed to show good cause as to why it cannot meet the present deadline, and a five-week extension would prejudice Defendant. To the extent Defendant cites to Plaintiff's Opening Claim Construction briefing in their Reply to Defendant's Motion for Judgment on the Pleadings, D.I. 64, Plaintiff may seek file a motion for leave to file a sur-reply to address those arguments.
SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order)(internal citations omitted).
It's worth noting that Plaintiff's motion really did not suggest that they couldn't meet the deadline to file their answering brief. There was no hint of a scheduling conflict or illness, or any of the factors we normally see in a motion to extend time. Instead, it read a great deal more like a motion for a stay, arguing that efficiencies would be gained by deciding the issues in a different order.
One can't help but wonder if the outcome might have been different if the motion had been brought as a motion to stay and framed in terms of those factors (simplification, status, prejudice) rather than 6(b)'s diligence framework. Hopefully we'll get a data point around that issue soon.
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