Supreme Court Requests Views of Solicitor General in Berkheimer Appeal

January 11, 2019

After the US Supreme Court’s 2014 Alice decision, defendants jumped at the chance to challenge the eligibility of a patent under Section 101 early in litigation. Such motions remained routine, subsequent narrowing caselaw notwithstanding, until February 2018. That month, the Federal Circuit held—in Berkheimer v. HP—that summary judgment of patent ineligibility is premature where a party raises questions of fact as to whether the patent’s claims contain the required inventive concept. The Federal Circuit’s decision in Berkheimer, and its companion ruling in Aatrix Software v. Green Shades Software (holding that such factual disputes could also preclude resolution of 101 challenges at the Rule 12 stage), have raised questions about whether patent eligibility will ultimately become an issue not properly raised until much closer to trial, or even later. That question may soon come before the Supreme Court, which on January 7 requested the views of US Solicitor General Noel Francisco as to the certiorari petition filed by HP last September in the Berkheimer case.

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