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Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Whether there are underlying material disputes of fact relevant to patent subject matter eligibility, and (if so) when, how, and by whom those disputes should be resolved, have been the topic of much discussion since the Federal Circuit's Feb. 8, 2018 decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal Circuit ruled that although the ultimate determination of eligibility under 35 U.S.C. §101 is a question of law, that determination may nonetheless encompass underlying factual disputes that must be proven by clear and convincing evidence, such as "whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field" under Step Two of the Supreme Court's Alice test. See, id. at 1368; see also, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354-55 (2014).
Chief District Judge Barbara Lynn of the United States District Court for the Northern District of Texas recently issued a decision shedding light on how these questions may be resolved in the post-Berkheimer world. In iLife Techs., Inc. v. Nintendo of Am., Inc., defendant Nintendo moved for summary judgment that the disputed patent was directed to subject matter ineligible for patenting. See, No. 3:13-cv-4987-M, Dkt. Nos. 223-25. The district court carried the motion (id., Dkt. Nos. 302, 304), and the case proceeded to a six-day jury trial in August 2017. Id., Dkt. Nos. 326, 331, 332, 337, 338, 339. At trial, the Section 101 issues were not submitted to the jury, which returned a verdict of infringement and awarded damages of $10,100,000. Id., Dkt. No. 342.
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