The Facts in the “Abstract”

by Jackson Walker
Contact

Jackson Walker

“We demand rigidly defined areas of doubt and uncertainty!”

-Douglas Adams, Hitchhiker’s Guide to the Galaxy

It seems that Douglas Adams has a great many fans in the universe of IP law.  While he almost certainly didn’t have patent issues in mind while penning his cult classic, he was nevertheless prophetic of our current situation.  In 2014, the Supreme Court issued its landmark Alice decision, which had the effect of significantly raising the bar for “patent eligibility.”   The opinion has had a particularly adverse effect on so-called “software” enabled patents; the buzz being that the very concept of “software” patents is now dead.  As a general proposition, that statement is simply wrong.  However, it is true that many software patents—primarily those issued before the days of Alice—are now being invalidated for claiming only “abstract” ideas.

But what exactly does it mean to be “abstract”?  Because of the amorphous state of patent “eligibility” standards, the decisions invalidating “abstract” patents largely lack consistency or predictability.  I have listened to numerous District and Appellate Judges as well as new USPTO director Adrei Iancu suggest, or say outright, that the current standards for defining an “abstract idea” are a virtual black hole.  I completely agree.

Despite the doubt and uncertainty behind the ultimate question of whether a claimed invention is “abstract or not”, there has been a reasonable certainty during patent litigation that the issue will be raised, and likely decided, by a judge relatively early in a case.  For example, from the date of the Alice case through the first quarter of 2017 there were approximately 270 patent eligibility decisions that stemmed from early Motions to Dismiss or Motions for Judgment on the Pleadings compared to only about 100 decisions from Motions for Summary Judgment.  Those stats tell us that judges have been ready and willing to take up the patent eligibility question at the outset.  However, even that consistency may be changing.

A recent pair of Federal Circuit decisions have ruled that, at least in some cases, patent eligibility under Alice may involve questions of fact for a jury to decide.  In Berkheimer v. HP, Inc., the Federal Circuit held that one of the central components of the “abstract” inquiry – “whether a claim element or combination of elements is well-understood, routine and conventional” – is a fact question that a patent challenger must prove by “clear and convincing” evidence.[1] This is the same standard used to invalidate patents on any other ground, such as whether the patent is obvious.  Those questions, with very rare exception, go to a jury.  At the same time, however, the Berkheimer court emphasized that there are plenty of times when “abstractness” can be decided as a matter of law.  Even under the particular facts of Berkheimer, the court found some patent claims summarily ineligible, while other claims of the same patent were held to present factual issues that should have gone to a jury.

Similarly, the Federal Circuit decided in Aatrix Software, Inc. v. Green Shades Software, Inc. that a plaintiff’s initial complaint could raise fact issues that, when accepted as true, might preclude finding a patent ineligible at the early pleading stages.[2]  This means that in some cases the eligibility issue must be decided either at summary judgement or by a jury.

To summarize, the determination of whether a patent is invalid because it is too “abstract” could be decided in an early motion to dismiss, during summary judgement, during trial, or perhaps even after trial.  But in some cases, it is error to decide the issue early in a motion to dismiss.  And in other cases, it is error to decide the issue during summary judgment.  Make sense?

Although only a couple months old, these decisions are already disrupting the relative order of patent litigation.  As a patent holder, “is there anything that can be done at the outset to dissuade an Alice motion?”  As a defendant, “should we now wait to file our Alice motion?”  As a judge, “should I defer to a jury to avoid a reversal under this new precedent?”  The answers to these, and other, questions are shifting in ways that require more deep thought and strategy while offering less certainty of the outcome.

Challenges to patent eligibility through Alice motions will continue to be a hallmark of patent litigation for the foreseeable future.  However, decisions tackling this issue are released weekly, and as the stats so far show, there appears to be a relative inertia to district courts identifying issues of “fact” in questions of the “abstract.”  Since Berkheimer and Aatrix, and as of the date of this article, 15 decisions have tackled whether “fact issues” barred deciding the eligibility questions in the early stages of a case or at summary judgment.  But only five of those decisions have found that fact issues precluded an early ruling.  Thus, while the procedural law of patent eligibility begins its descent into the same void as the substantive law, as Douglas Adams would say, “don’t panic”.  At least not yet.

[1] 882 F.3d 1121 (Fed. Cir. 2018).
[2] 882 F.3d 1121 (Fed. Cir. 2018).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jackson Walker | Attorney Advertising

Written by:

Jackson Walker
Contact
more
less

Jackson Walker on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.