Two recent Federal Circuit decisions have discussed situations in which patents shouldn’t be invalidated at an early stage.

The patent world was thrown into turmoil by the 2014 US Supreme Court decision in Alice Corp Pty Ltd v CLS Bank Int’l. The Alice case established a two-part test for determining whether a claimed invention was in fact eligible for a patent under 35 USC Section 101:

• are the patent claims directed to an abstract “idea” or patent-ineligible concept?
• do the elements of the patent claims, individually and together, make the claims patent-eligible?

The second part of the test is passed when the claimed invention involves “more than performance of well understood, routine, [and] conventional activities previously known to the industry.”

Courts since Alice have struggled to apply these tests.

In the case of Berkheimer v HP Inc., a federal district court granted defendant HP’s summary judgement motion and found that a number of claims of the plaintiff’s patent were invalid either under section 101 or for indefiniteness.

The Federal Circuit vacated part of the ruling, finding that some issues shouldn’t have been resolved as a question of law at the summary judgement stage:

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. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

However, the court didn’t go so far as to say that section 101 issues could never be resolved via summary judgement.

The patent infringement case of Aatrix Software, Inc. v Green Shades Software, Inc. was initially dismissed by a district court on the basis that the patent claims were ineligible under section 101.

The Federal Circuit vacated because a proposed amended complaint raised “allegations [that] at a minimum raise factual disputes underlying the § 101 analysis.”

However, one of the judges dissented in part, saying that “the majority opinion attempts to shoehorn a significant factual component into the Alice § 101 analysis.”

In other words, even judges can’t agree sometimes on whether a patent dispute can be decided as a matter of law, or whether it turns on the facts of the case.

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