Revised Local Rules Become Effective December 1, 2009

The Western District adopted revised local rules, including some important revisions to CR 7, the rule governing motion practice.   These revisions take place December 1, 2009. 

Here is a summary of the changes to CR 7:

• CR 7(d)(1), the rule governing the consideration of motions and saying that certain motions shall be noted for consideration on the day they are filed, now expressly includes both motions for the clerk to enter default, and a motion for default judgment.
•  CR 7(d)(2), the rule setting briefing schedules for all other motions, gets rid of the so-called "seven-day" motions, and says that all motions not falling under 7(d)(1), shall be noted for a Friday, and that certain motions shall be noted for consideration "no earlier that the second Friday." Note that this list is dramatically reduced from the sort of motions that used to be considered on a seven day calendar.  The thought here was that there was simply not enough time for parties to oppose motions that were listed.  The motions that can be considered on a shorter schedule, albeit not as short as the old "seven-day" motions, include 

1. Motions for relief from a deadline;
2. Motions or protective orders;
3. Motions to seal under CR 5(g)

• Papers  in opposition to any such motion shall be due the Wednesday before the noting date.
• CR 7(d)(3) says that all other non dispositive motions shall be noted for consideration on the third Friday.
• CR 7(d)(4), a compeltely new rule, limits motions in limine to one per side, and eliminates reply.  This rule also includes a requirement for counsel to meet and confer in advance of filing the motion in limine, and that the motion include a certification that "the movant has in good faith
  conferred or attempted to confer with other affected parties in an effort to resolve which
  matters really are in dispute."  
• The new rule further provides that "A good faith effort to confer requires a face-to-face meeting
  or a telephone conference. If the court finds that counsel for any party, or a party
  proceeding pro se, willfully refuses to confer, fails to confer in good faith, or fails to
  respond on a timely basis to a request to confer, the court may take action as stated in GR
  3 of these rules."
• The page limit for Motions in Limine is expressly set at 18 by new rule 7(e)(5).  This is probably sufficient for most cases.  I would advise counsel to approach the Court with a stipulation to expand that page limit in special cases.
• CR 7(f)(1) motions to file overlength brief shall be filed "as soon as possible."  This eliminated the old rule requiring at least three judicial days before the underlying motion or brief is due.
• CR 7(h), motions for reconsideration, this rule was changed to allow fourteen days for the filig ot motions for reconsideration, expanded from 10.

That's all for CR 7, folks. There are other important changes to the rest of the rules, so be sure to read them yourself.

Ancora Settles Litigation with Microsoft

I posted back in April about a lawsuit that was transfered to Seattle. The lawsuit was between Ancora Technologies and Microsoft.  Recently, Ancora sent out the following press release.

Seattle, WA (PRWEB) November 13, 2009 -- Ancora Technologies today announced that a settlement has been reached in the litigation between Ancora, Miki Mullor, and Microsoft, both in respect of the patent infringement claim and Microsoft's claims against Mullor, Ancora's founder and a former Microsoft employee.

In the litigation and in reaching this settlement, all parties denied any and all liability. While the terms of the settlement are confidential, the parties have released each other from all claims of the litigation.
Miki Mullor, Ancora's founder and a former Microsoft employee said, "I am pleased with this resolution and wish my friends at Microsoft's Windows division nothing but success with Windows 7 launch."
This settlement resolves all claims between these parties.

Big Baboon Battles Bilski, Court Cites Morse Code

Debate over the patentability of process patents, particularly those having claims drawn to software inventions, continues to rage in the wake of the U.S. Supreme Court's decision to accept certiorari in Bilski.  The state of the law is in flux.  Portfolios of patents hang in the balance while patent lawyers across the U.S. extend time on pending applications, waiting to see what the Supreme Court will do in Bilski.  In Seattle, one can almost hear the wheels of software innovation screeching to a halt, as companies and investors decide whether it makes sense to invest in new software ideas, not knowing whether their investments will even be eligible for patent protection.

A particularly thorny issue raised by Bilski is the patentability of a process implemented by a machine, the so-called "machine prong" of Bilski's two-part test for patentability under 35 U.S.C. 101.  In application, "[a] claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed."  This begs the question, what software algorithm does not "pre-empt uses . . . that do not also use the specified machine or apparatus in the manner claimed?"  Put another way, what is it about the computer, computer network, system, or other "programed device," that makes software eligible for patent protection?

District Judge Stephen Wilson is wrestling with this issue in a case styled Big Baboon Inc. v. Dell, cv-09-1198 (USDC CD Cal.), where a small software company is pitted against Dell, HP, UPS, Fed Ex, Amazon, and others, alleging infringement of U.S. Patent Nos. 6,115,690 and 6,343,275, patents for "Integrated Business-to-Business Web Commerce and Business Automation."  At first glance, Claim 1 of the '690 patent seems to claim everything e-commerce: "[a]n automated end-to-end business process for product sales that uses a relational database management system, the process comprising the steps of  [inputting a payment record and generating an invoice] and qualifying user inputs using experiential constraints, based on the then-current state of the database as a whole."  Not so, says Big Baboon, which offers an interpretation of the claims that "incorporate[s] specially programmed computers using an integrated database structure ("schema") specifically programmed into a database management system."  This "integrated database management system," according to Big Baboon, is the "particular machine" that fully satisfies both section 101 and Bilski's machine prong.

Judge Wilson appears to be favoring Big Baboon's argument for now.  Recently, he asked for supplemental briefing, citing O-Reilly v. Morse, 56 U.S. 62 (1853), where the U.S. Supreme Court allowed Morse to patent his code as used via the telegraph.  In his original 1837 petition to the Commissioner of Patents, Morse described his fifth claim as "[a] dictionary or vocabulary of words, numbered and adapted to this system of telegraph." 56 U.S. at 82.  In an 1848 reissue, Morse's fifth claim changed to recite "the systems of signs, consisting of dots and spaced, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences."  Id. at 86.  When the subject matter of Morse's fifth claim was challenged as not patent eligible, he responded by saying that it was "for telegraphic purposes; being an improved instrumentality in the art of telegraphing by electricity or galvanism."  Id.

Calling it a "remarkable body of dicta,"  Judge Wilson appears unpersuaded that "one may not patent a process that merely operates a piece of machinery."  See e.g. Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 557 (1898) ("where the process is simply the functionally or operative effect of a machine, the . . . cases are conclusive against its patentability.").

It will be interesting to see what develops. Suffice it to say that the Defendants take issue with Judge Wilson's description of this body of case law as "dicta," but it remains to be seen how this dispute over patent eligible software will be resolved.

Microsoft Denied Declaratory Judgment Jurisdiction a Second Time

Microsoft was unable to sustain a declaratory action brought against WebXchange to invalidate three patents covering network services.  The patents-in-suit are U.S. Patent Numbers 5,778,178; 6,212,556; and 7,340,506. According to IP 360, the USPTO has agreed to re-examine the '178 and '556 patents and has canceled the claims of the '506 patent.

On Friday U.S. District Judge Farnan sitting in Delaware, ruled that Microsoft lacked subject matter jurisdiction to bring the declaratory action, reasoning that Microsoft could not prove that the suits WebXchange filed against Microsoft customers over Microsoft's Virtual Earth Web Services and MapPoint Web Services software established an actual "case or controversy" with the software's maker.

Apparently this is the second time Microsoft has been unable to make allegations of declaratory judgment jurisdiction stick.  Back in April, the U.S. District Court for the Northern District of California in April dismissed a similar suit Microsoft filed against WebXchange.