Factual Questions May Preclude Early Resolution Of Invalidity Under Section 101

In the wake of the Supreme Court's Alice decision, 35 U.S.C. § 101 has become a popular and potent defense in patent litigation, especially in the areas of computer and internet related inventions.¹ Indeed, since Alice, it has become common for patents to be invalidated by district courts as a matter of law under 35 U.S.C. § 101 early in a case, either at the pleadings stage or on early motions for summary judgment. Two recent Federal Circuit decisions, handed down within a week of each other, now signal a potential and significant shift in this trend.

In Berkheimer v. HP Inc., the Court addressed the standards for a Section 101 invalidity defense at the summary judgment phase and reversed a finding of invalidity on summary judgment with respect to certain claims due to the existence of disputed questions of fact. ² This represents a significant shift in that prior cases have generally treated Section 101 as a purely legal question.