Perry Street Software, Inc. v. Jedi Technologies, Inc.

Document and request

The supplied document is a March 17, 2021 letter from Brian E. Haan, counsel for Jedi Technologies, Inc., to Judge Colleen McMahon. Jedi asked the court to take judicial notice, meaning to accept certain materials as established records without requiring the parties to prove them through ordinary evidence. The requested materials were excerpts from the prosecution history of U.S. Patent No. 10,164,918, identified as Exhibits 2 through 7 to Haan’s declaration.

Context

Jedi submitted the request while opposing Perry Street Software’s motion for judgment on the pleadings concerning patent eligibility under the framework commonly associated with the Supreme Court’s decision in Alice. The letter says the excerpts included an information disclosure statement, non-final and final examiner rejections, Jedi’s amendments and arguments responding to patent-eligibility rejections, and the reasons for allowance of the patent.

Jedi argued that the request was proper because its counterclaim referred to aspects of the patent’s prosecution history and because courts may take notice of official records of the United States Patent and Trademark Office. The letter cites decisions that, according to Jedi, support considering patent prosecution materials in connection with pleadings motions.

Disposition

The supplied text contains Jedi’s request and supporting argument but no judicial ruling. It therefore does not say whether Judge Colleen McMahon granted, denied, or otherwise resolved the request for judicial notice. It also does not provide a ruling on Perry Street’s motion for judgment on the pleadings.