Gilstrap Requires Early Disclosure of Alice Arguments in New Section 101 Standing Order

August 16, 2019

A recent RPX analysis showed that Section 101 invalidation rates have dropped significantly since the Federal Circuit issued its February 2018 decisions in Berkheimer and Aatrix, holding that the resolution of Alice motions may be premature where a party raises questions of fact as to a patent’s inventiveness. Now, District Judge Rodney Gilstrap has further raised the bar for defendants hoping to bring eligibility challenges in the Eastern District of Texas. In a recently issued standing order, Judge Gilstrap has required that any party intending to move for dismissal under Section 101 serve “Eligibility Contentions” containing a detailed disclosure of the “legal and factual basis” for that motion. This information must be filed within 45 days of receiving service of the plaintiff’s “Disclosure of Asserted Claims and Infringement Contentions”. The required factual disclosures, to comprise prior art establishing that a patent’s claims were “well understood, routine, [and] conventional”, reflect the manner in which Berkheimer and Aatrix have elevated the role of facts in the Section 101 analysis, which courts have historically treated as primarily a question of law—a shift that has divided even the Federal Circuit itself in debates over the impact of those two opinions.

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