There has been a lot of discussion on when to file a motion to dismiss under section 101. To help in this decision, Judges Gilstrap and Payne have instituted a new procedure for filing a motion to dismiss under 35 U.S.C. §101. The new procedure requires that a party seeking to file a dispositive motion under section 101 before the Court’s Claim Construction Order has issued may do so only upon grant of leave from the Court after a showing of good cause. The Court also requires the standard letter briefing process to be followed in seeking leave to file the motion. If, however, the Court’s Claim Construction Order has issued, a party has two weeks from issuance of the Claim Construction Order to file its dispositive motion under section 101 without leave of court and without use of the letter briefing process.
And on the heels of this new procedure being instituted, a Judge Payne issued an opinion indicating that consideration of a section 101 motion pre-Claim Construction will be the exception rather than the norm. In the opinion, Judge Payne states:
“While handling the issue of §101 eligibility at the pleading stage is permissible, those issues are often inextricably tied to claim construction. Thus, it seems a definitive ruling on eligibility before claim construction is only warranted in narrow circumstances, making such a ruling the exception rather than the rule.”
This new procedure and ruling provides some guidance to counsel on when and how to file a section 101 motion to dismiss.