Intellectual Property Law

New Matter 2018 SUMMER Volume 43, Number 2

Federal Circuit Report

Rex Hwang
Glaser Weil Fink Howard Avchen & Shapiro LLP

Dan Liu
Glaser Weil Fink Howard Avchen & Shapiro LLP


To determine whether a patent meets the patent eligibility requirement of 35 U.S.C. § 101 under the Alice/Mayo framework, courts first determine whether the claims at issue are directed to patent-ineligible concepts, and if so, whether the claims contain "an inventive concept" sufficient to transform patent-ineligible subject matter into a patent-eligible invention.1 The second step of the test is satisfied if the claims involve more than performance of well-understood, routine, and conventional activities previously known to the industry. Although the ultimate determination of patent eligibility is a question of law, the Federal Circuit’s recent decisions in Berkheimer v. HP and Aatrix v. Green Shades suggest that raising factual disputes, even in the form ofunsubstantiated allegations in a complaint, may be used to prevent early invalidation of patents under § 101.2

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