Metro Detroit patent attorney Tyson Benson is quoted in a new Law360 article about the rise in district court litigation that includes disputes over patent eligibility.
With the full weight of Section 101 pressing down on them, courts are taking more time to consider patent infringement lawsuits by allowing patent owners to submit amended complaints that introduce additional factual allegations.
In the past, defendants were occasionally able to fight off infringement lawsuits by using Rule 12 to challenge the eligibility of the patent in question and, if successful, having the case dismissed as a question of law. By allowing patent owners to submit amended complaints that underpin their patent as valid under 101, cases are effectively drawn out as judges review new complaints, expert witnesses are called, and matters can potentially lead to jury trials.
Why are district courts doing this? In February 2018, the Federal Circuit reversed the district court’s decisions in Berkheimer v. HP and Aatrix v. Green Shades, which had invalidated the patents in question. District courts are now moving more carefully and giving more credence to questions of fact.
Beyond California, judges in litigation heavy districts like Delaware and the Eastern District of Texas are also allowing patent owners to amend complaints and have denied defendants’ motions to dismiss cases based on 101.
Some worry that this trend could be disproportionately beneficial to non-practicing entities who have shown vulnerability to 101 issues, as well as Goliath sized companies hoping to sue David sized competitors into oblivion. These groups could now potentially submit a stream of amended complaints and prolong litigation for as long as they can in an attempt to win a settlement from, or bankrupt, defendants.
The good news for defendants, as Benson points out, is that at least one judge has noted that amended complaints must be “consistent with the patent intrinsic record,” including the patent specification and claims. This would restrict the patent owner from being “able to jumble up the record by having [statements] that say this passes muster” because the claims cover something not well-known “when actually the specification and claims state to the contrary,” he says.
Just as in patent prosecution, 101 issues in patent litigation continue to be murky. There are signs for optimism for defendants, as Benson pointed out, while plaintiffs would be wise to include as many statements of fact in their initial complaints as possible so as to strengthen their positions.