Federal Judiciary

No broad rule of exclusion under Bilski, thus fact issues precluded judgment on the pleadings

By Michael C. Smith

Versata Software, Inc. et al v. Sun Microsystems, Inc., 2:06-cv-00358 (E.D. Tex., March 31, 2009)
Judge: T. John Ward
Holding: Defendant's Motion for Judgment on the Pleadings DENIED
This one's unpublished for the moment, but will no doubt be soon, as it references an issue of some interest, namely the scope of the Federal Circuit's opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) dealing with method claims. 
In this opinion, Judge Ward denied the defendant's motion for judgment on the pleadings that the asserted method claims were invalid in light of Bilski.  Defendant argued that the claimed methods did not satisfy either the "machine" or "transformation" test, but Judge Ward concluded that the defendant's interpretation of the case was overbroad.  He noted that in Bilski the Fed Circuit expressed declined to adopt a broad exclusion over software or any other category of claims "beyond the exclusion of claims drawn to fundamental principles." 
But the real reason for the denial was a more pragmatic one based on the procedural context of the defendant's motion - the Court held that in the absence of the existence of a broad rule of exclusion, the motion had to be denied because Sun had not carried its burden to prove that "there are 'no disputed issues of material fact and only questions of law remain.'?  Judge Ward noted that at the Rule 12(c) stage pleadings are construed liberally, and judgment is typically reserved only for issues such as statutory interpretation or sovereign immunity.  Bilksi simply did not provide the sort of certainty that justified judgment on the pleadings, at least under the facts of this case.

Full post as published by Eastern District of Texas Federal Court Practice on April 03, 2009 (boomark / email).