District Courts Tackle Alice Factual Disputes More Frequently at Rule 12

The Supreme Court’s Alice decision once provided a key offramp for defendants hoping to avoid lengthy litigation, particularly trial, by challenging patent eligibility at the outset. However, the Federal Circuit’s 2018 Berkheimer and Aatrix opinions narrowed the ability to succeed with such motions by requiring courts to deny those motions if factual disputes arise over a patent’s inventiveness.

A recent RPX analysis illustrates the impact of those rulings on early Alice challenges. In particular, the graph below shows Alice decisions that turned on Berkheimer and/or Aatrix—meaning a plaintiff asserted that a factual issue precluded early resolution and the court’s order actually decided that issue. As reflected by the significantly larger bar on the top, courts have addressed factual disputes far more often on a per-patent basis via Rule 12 motions, which are generally brought earlier in litigation than summary judgment motions are.

However, the data also show that plaintiffs succeed far less often when trying to use Berkheimer as a defense to block an Alice ruling at Rule 12: at that stage, courts found sufficient facts to rule 54% of the time. For summary judgment decisions turning on Berkheimer, courts found that they had sufficient facts to move forward just 33% of the time.

For more on Alice, including the ongoing debate over Section 101 as well as further analysis of patent eligibility data, see RPX Insight.