In a pair of recent decisions the Federal Circuit has vacated two patent ineligibility determinations, signaling perhaps that the chokehold of Alice may be loosening. Surprisingly, the basis of these decisions comes not from the Alice test itself, but from the Federal Rules of Civil Procedure.
In the first decision, Berkheimer v. HP, Inc., the Federal Circuit stated:
While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.
The Court then held that the district court erred in granting summary judgment of ineligibility because the specification described inventive features, which created a genuine issue of material fact. This decision stands in sharp contrast with previous analyses of patent eligibility, which typically resolved the issue as a pure question of law.
Thus, it was even more surprising when the Federal Circuit sided with the patentee again just a week later. In Aatrix Software v. Green Shades, the Court vacated a dismissal on patent eligibility grounds and held that the district court failed to consider disputed issues of material facts. Here, it was the complaint which gave rise to the factual issues, as it stated that the claimed subject matter contained inventive components which improved the workings of the invention. The Court explained that the complaint contained factual allegations and not legal allegations and therefore must be given due process.
This means that patentees have a couple of avenues in establishing an issue of material fact sufficient to overcome a motion on the pleadings. Pointing to inventive features in either the specification or the pleadings themselves seems to be enough to show that the claims are eligible, as factual allegations made by the non-moving party must be taken as true. Notably, the complaint at issue in Aatrix was actually an amended complaint, which gives litigators an opportunity to avoid dismissal on eligibility grounds and amend the complaint to include factual allegations that show inventive features of the claims.
Hopefully, these two decisions signal a change in the Patent Office as well as in the courts. Currently, it is common for the Office to promptly dismiss claims as being routine or conventional with little to no actual evidence. Treating the determination as a question of fact would provide applicants with the possibility of allowance if they could point to evidence in the prosecution history that the claims are not routine or conventional.
The application of the Federal Rules of Civil Procedure to patent eligibility comes as a relief to patent practitioners. However, the Court was quick to point out that these two decisions are not intended to question their prior decisions, stating that “not every § 101 determination contains genuine disputes over the underlying facts.” These two decisions tee up a potential en banc case, where the Federal Circuit could determine the extent to which eligibility involves factual disputes. Until then, though, patent practitioners have a reason to be optimistic about this departure from the typical post-Alice precedent.
