In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.
The cause of the shift is a trio of patentee-friendly Federal Circuit opinions all penned by Judge Moore. These decisions, Berkheimer, Aatrix and Exergen, together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under section 101. Hewlett Packard, the defendant in Berkheimer, has requested a rehearing of the case by the en banc Federal Circuit. It’s no exaggeration that the future of section 101 law in the
U.S. hangs in the balance, given the view of many experts that the Supreme Court is not eager to revisit these issues at present.
Our panel of experts will address:
- How to best leverage these decisions to your advantage.
- What you need to know about how to handle issues that could arise on appeal.
- Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
- What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
- How does the analogy to obviousness determinations hold up?
- Calvin Griffith, Jones Day
- Daryl Joseffer, King & Spalding
- Corey Salsberg, Novartis