Berkheimer Blocks at Least Half of Early Alice Challenges When Facts Are at Issue

The Supreme Court’s 2014 Alice decision long served as an early offramp for defendants in patent cases, allowing companies to invalidate patents before they had to face the most expensive parts of infringement litigation. However, this changed as a result of the Federal Circuit’s Berkheimer and Aatrix decisions, under which courts must deny Alice challenges when patent owners establish factual disputes over inventiveness.

RPX data show that Berkheimer has significantly curtailed early Alice challenges when facts are at issue. For Alice decisions issued through Q2 2020 that turned on Berkheimer or Aatrix, meaning that a plaintiff asserted that a factual issue precluded early resolution and the court’s order actually addressed that issue, courts found sufficient facts to rule about half of the time for Rule 12, or 88 of the 175 patents challenged at that stage.

Moreover, for summary judgment decisions turning on Berkheimer, courts found that they had sufficient facts to move forward just 30% of the time (or just eight patents out of 27)—though all eight of those patents saw claims invalidated.