Alice framework not a ‘precise science’, says report
The first stage of the Alice v CLS Bank framework is not a “precise science”, according to a report analysing patent cases in Virginia.
Challenging a registered patent under section 101 continues to be a successful defence tactic in patent infringement claims, added the report, which focused on the US District Court for the Eastern District of Virginia.
Hunton & Williams released its annual “Intellectual Property Year in Review for the Eastern District of Virginia” report in February.
The report, authored by IP attorneys Charles Ossola, Stephen Demm, and Wendy McGraw, identified key trends in IP cases in the Eastern District of Virginia over the previous year.
Hunton & Williams claimed that challenging patent validity under section 101 continued to be a successful tactic employed by those accused of patent infringement in the district in 2017.
For example in Virginia Innovation Sciences v Amazon.com the court engaged in a “detailed discussion” of section 101 and the two-step Alice inquiry, according to the report.
It said the first stage of the Alice test is not a “precise science” and courts will often move to the second stage of inquiry without sufficiently determining the “character or focus of the patent” in the first step.
The district court explored the second step of the Alice test in TLI Communications LLC Patent Litigation, with Hunton & Williams explaining the court’s interpretation as meaning a patent owner “must show more than an unconventional idea”.
Such cases show the “interplay between patentability, obviousness, and novelty”, according to the report. Through the cases the district court has separated the issues of patent eligibility and a Patent Trial and Appeal Board ruling of non-obviousness, concepts which were previously conflated.
The report also identified procedural processes of note relating to section 101. For example, in The Cleveland Clinic the court confirmed that “a section 101 challenge may be decided at the motion to dismiss stage”, even where the case centres on a complex life sciences matter.
In addition the court rejected an argument that after Alice a section 101 challenge is subject to a higher standard, confirming to the district that the standard is “clear and convincing for any invalidity challenge” whether before or after Alice, the report explained.
With regard to copyright matters in Virginia, the report identified BMG Rights Management LLC v Cox Communications Inc as a significant case which provided insight on “novel issues”. Important trademark cases heard in the district last year include Booking.com v Matal and Valador Inc v HTC Corp, according to the report.
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