Circumstances Surrounding the Submission of the Second-Prong Alice Question to a Jury Challenged in Federal Circuit Appeal

In cross-appeals, plaintiff Ollnova Technologies Limited and defendant Generac Holdings (ecobee) each contest aspects of a judgment entered by District Judge Rodney Gilstrap after an Eastern District of Texas jury returned a mixed verdict awarding Ollnova $11.5M in October 2023. One issue up for the Federal Circuit’s consideration is the practice of submitting a question to the jury to resolve the second prong of an Alice analysis: i.e., whether the elements of a challenged claim, taken individually or as an ordered combination, supply an “inventive concept”, enough to save it from invalidation. ecobee faults Judge Gilstrap for not apprising the jury of the abstract idea to which the court had found the challenged claim here directed, and a set of interested nonparties—Forescout Technologies, High Tech Inventors Alliance (HTIA), HP, and SAP—argue in a “friend of the court” brief that Judge Gilstrap’s jury instructions here “lower the standard for patent eligibility and permit a jury to uphold claims where their only inventiveness lies in the patent ineligible subject matter”.