Trends In Section 101 Motions 6 Years After Berkheimer

The U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision created a seismic shift in how courts and litigants approach patent eligibility under Title 35 of the U.S. Code, Section 101.[1]

Indeed, the two years following the Alice decision saw a 525% increase in Section 101 motions filed and a 12.5% increase in Section 101 motions granted.[2]

When the U.S. Court of Appeals for the Federal Circuit revisited patent eligibility four years later in Berkheimer v. HP Inc., commentators predicted a shift in the opposite direction — i.e., that parties would be more reticent to file, and courts more reluctant to grant, Section 101 motions.[3]

Now, six years post-Berkheimer, data shows that those predictions were only partially correct. Some jurisdictions — e.g., the U.S. District Court for the Western District of Texas — matched commentators’ expectations. 

Others, though, now grant a higher percentage of Section 101 motions — e.g., the U.S. District Court for the Northern District of California.

This article presents empirical evidence demonstrating the ways Section 101 motion filings and the resulting decisions have changed in the six years after Berkheimer, nationally and across four exemplary jurisdictions.

Specifically, this article analyzes 12(b)(6), 12(b)(c) and summary judgment motions to invalidate a patent under Section 101 over the three years preceding and six years following Berkheimer in February 2018, using data available through Docket Navigator.

Berkheimer

Before delving into Berkheimer’s impact, it’s worth quickly reviewing the decision itself. In Berkheimer, the Federal Circuit reviewed a grant of summary judgment of invalidity under Section 101.[4] In doing so, it made a fundamental clarification to the two-part Alice test, holding that while “[p]atent eligibility under 35 U.S.C. § 101 is ultimately an issue of law,” there may still be important underlying issues of fact.[5]

And it determined that Alice step two — which asks whether the challenged claims contain an “inventive concept … sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself”[6] — is a question of fact.[7]

So, certain eligibility decisions could no longer be made without a fact finder’s input.

To read Alexa’s full article, please click here.