Omega Patents LLC v. Firstech LLC

[3] UNITED STATES DISTRICT COURT 4 WESTERN DISTRICT OF WASHINGTON AT SEATTLE [5] OMEGA PATENTS, LLC, [6] Plaintiff, [7] C20-1344 TSZ v. [8] MINUTE ORDER FIRSTECH, LLC, [9] Defendant. [10] The following Minute Order is made by direction of the Court, the Honorable [11] Thomas S. Zilly, United States District Judge: 12 (1) Defendant Firstech, LLC’s motion to dismiss, docket no. 11, is STRICKEN without prejudice to refiling after the United States Supreme Court issues a decision in 13 Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 20-891. Defendant’s motion seeks dismissal as to one of four patents-in-suit, namely U.S. Patent No. 7,305,293 (the “’293 14 Patent”). The motion challenges patentability, relying on jurisprudence developed under 35 U.S.C. § 101 . The Federal Circuit’s most recent decision on § 101, Am. Axle & Mfg., 15 Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is now the subject of a petition for writ of certiorari, which the dissenting member of the panel believes is likely 16 to be granted, see Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 977 F.3d 1379, 1383 (Fed. Cir. 2020) (Moore, C.J., concurring in the denial of a motion to stay mandate). 17 The petition for writ of certiorari, to which the Supreme Court has requested a response, outlines the questions presented as follows: [18] 1. What is the appropriate standard for determining whether a patent 19 claim is “directed to” a patent-ineligible concept . . . ? 20 2. Is patent eligibility . . . a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art 21 at the time of the patent? 22 Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 20-891, Pet. at i (Dec. 28, 2020). Given the petition’s framing of the issues as to which a writ of certiorari is sought, and 1 the arguments on which defendant rests in attacking, and plaintiff relies in supporting, the ’293 Patent, the Court concludes that the goals of judicial economy and efficiency 2 will be best served by deferring any ruling on patentability until the Supreme Court resolves the American Axle case. [3] (2) Having reviewed the parties’ Joint Status Report, docket no. 18, the Court 4 SETS a five-day jury trial for June 6, 2022. A separate scheduling order will be entered. (3) The Clerk is directed to send a copy of this Minute Order to all counsel of [5] record. [6] Dated this 10th day of February, 2021. [7] William M. McCool 8 Clerk 9 s/Gail Glass Deputy Clerk