IAM blog quotes Lemley

From IAM's Patent owners in the US get a big boost after the Federal Circuit hands down a key 101 decision


Just how significant might this shift be? Well, Stanford Law School’s Professor Mark Lemley immediately took to Twitter to label the decision in Berkheimer a “blockbuster”. That’s because the three-judge panel in the case ruled that patent eligibility should not simply be viewed as a legal question. “Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts,” Judge Moore wrote in the opinion (she also wrote the majority opinion in Aatrix).

That’s significant because it means that district courts may increasingly be forced to consider patentability at trial and not at an earlier stage in summary judgment. In recent years, so-called Alice motions have handed defendants a particularly effective means of knocking out a patent that has been asserted against them. Critics contend that they have become a means for district court judges to clear their dockets of patent disputes and have become representative of how the US system has swung against IP owners.

If those motions become much harder to bring then, theoretically, more patent disputes could get to the courtroom floor; or defendants might have more incentive to settle and agree to take a licence rather than rely on a lengthy and expensive trial.

According to Lemley, it might also mean that Alice loses some of its edge. “If this approach becomes widespread it will be impossible to resolve patentable subject matter before trial, and Alice will become irrelevant as a practical matter,” he says