Unorthodox “Shootout” Procedure in Finjan Suit Tees Up First Post-Alice Trial on Patent Eligibility

November 30, 2018

Patent subject matter eligibility has traditionally been regarded primarily as a matter of law, with facts playing a supporting role for courts asked to analyze patents under Alice and its progeny. However, through its Berkheimer and Aatrix decisions this past February, the Federal Circuit elevated that role for facts. The court ruled that a defendant cannot win early dismissal under Section 101 where a patent-holder raises sufficient issues of fact as to whether the challenged claims contain an inventive concept. This shift raised the possibility that patent eligibility might become an issue not typically decided until trial—yet a jury has not weighed in on Section 101 since the issuance of Alice, and did so only once before that. This month could see that change: in an imminent trial between Finjan, Inc. and Juniper Networks, a jury will be asked to determine if one of the NPE’s antimalware patents is invalid under Section 101. Proposed jury instructions filed on November 28 show that the parties sharply diverge as to how the jury should be instructed on that issue.

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