Can Juries Decide Patent Eligibility
Under 35 U.S.C. §101?
Gregory H. Lantier & Richard A. Crudo*
Introduction
No provision of the Patent Act has been more frequently litigated over the
last several years than 35 U.S.C. §101. After not having decided a §101
case in nearly a decade, the Supreme Court issued four §101 decisions in
as many years, most recently articulating a test for determining whether
computer system claims are patent eligible in its 2014 Alice Corp. Pty. v. CLS
Bank International decision.1 Since then, the Federal Circuit has decided more
than fty cases involving §101, many of which were appeals from district
court actions where parties raised §101 as a defense to infringement. And in
many of those cases, courts resolved §101 challenges at the pleading stage on
either a Rule 12(b)(6) or Rule 12(c) motion. Indeed, more than 56% of such
motions have been granted or granted in part, indicating courts’ willingness
to adjudicate §101 at the outset of a case.2 us, there is no doubt that, in
many cases, §101 is properly resolved by a judge at the pleading stage or on
summary judgment.
But for as much as has been decided about §101 over the past several years,
there remain several outstanding issues. What happens, for example, when
a judge denies an infringement defendant’s motion for summary judgment
under §101, but does not expressly grant summary judgment of no invalidity
to the patentee? Can a jury hear this issue? Should a jury hear this issue? More
fundamentally, does the Seventh Amendment jury trial right attach to §101
challenges? ese important procedural and constitutional questions have
received little attention. Instead, courts and commentators seem to assume
* Greg Lantier is a litigation partner with WilmerHale in Washington, DC. His practice
focuses on intellectual property and other complex commercial litigation and counseling at
the trial and appellate stages in state and federal courts. His full biography is available at:
https://www.wilmerhale.com/gregory_lantier/. Richard A. Crudo is a former senior associ-
ate in the Washington, D.C. oce of WilmerHale. All research and drafting of this article
occurred while Mr. Crudo was employed at WilmerHale.
1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014); see also Ass’n for Mo-
lecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013); Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012); Bilski v. Kappos, 130 S.Ct. 3218 (2010).
2 As of October 3, 2017. is gure is based on the authors’ review and tabulation of all
district court cases addressing §101 after Alice.
46 Federal Circuit Bar Journal Vol. 27, No. 1
that “patent-eligible subject matter is a pure legal question for the Court, not
the jury, to decide.”3 Litigants, therefore, routinely ask courts to decide patent
eligibility, even after a jury trial is held as to other issues.4 ey appear to do
this without ever considering Seventh Amendment implications.
Indeed, none of the best-known sets of model jury instructions for pat-
ent infringement cases contains an instruction on patentable subject matter
under §101.5 is is true even though those very same instructions contain
3 Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-cv-744-JRG-RSP, 2016 WL
866715, at *1 (E.D. Tex. Mar. 5, 2016) (quoting expert report); Contentguard Holdings,
Inc. v. Apple Inc., No. 2:13-CV-1112-JRG, 2016 WL 1637280, at *6 (E.D. Tex. Apr. 25,
2016) (denying renewed motion for judgment as a matter of law based on §101 as “non-
sensical” given that “[p]atent eligibility is a matter of law and is not properly submitted to
a fact-nder such as a jury”).
4 See, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1311 (Fed. Cir.
2016) (“After trial, Symantec brought a motion under Fed. R. Civ. P. 52(c) for a judgment
that all the asserted claims of the three patents-in-suit are unpatentable under 35 U.S.C.
§101, an issue not addressed in the jury verdict.”); DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1251 (Fed. Cir. 2014) (“At the conclusion of trial, NLG and Digital River
renewed motions for JMOL pursuant to Rule 50(b) of the Federal Rules of Civil Procedure
(FRCP) on several grounds. NLG contended the asserted claims of the ’572 and ’399 patents
are invalid under 35 U.S.C. §101 because the claims are directed to patent-ineligible subject
(“In April 2006, the district court held a fourteen-day jury trial on the issues of infringe-
ment and validity.... In August 2006, the court conducted a four-day bench trial on Lilly’s
additional defenses of unpatentable subject matter, inequitable conduct, and prosecution
laches, ruling in favor of Ariad on all three issues.”); Finjan, Inc. v. Blue Coat Sys., Inc., No.
13-cv-03999-BLF, 2016 WL 3880774, at *1 (N.D. Cal. July 18, 2016) (“Following the jury’s
verdict, the Court held a bench trial on non-jury legal issues regarding...patent eligibility
under 35 U.S.C. §101[.]”); Constr. Tech., Inc. v. Lockformer Co., 781 F.Supp. 195, 198
(S.D.N.Y. 1991) (matters left over following trial included whether the subject matter was
non-patentable); see also Howes v. Great Lakes Press Corp., 679 F.2d 1023, 1024, 1027–28
(2d Cir. 1982) (nding that district court properly exercised its authority to decide patent
eligibility issue for rst time on motion notwithstanding the verdict after jury trial).
5 See, e.g., Fed. Circuit Bar Ass’n, Model Patent Jury Instructions (July 2016), https://
www.fedcirbar.org/Portals/0/File%20Manager/Resources/Publications/Model%20Pat-
ent%20Jury%20Instructions/FCBA%20Model%20Patent%20Jury%20Instructions%20
(UPDATED%20DRAFT%20July%202016).pdf archived at https://perma.cc/6YF9-
CCHJ; AIPLA, Model Patent Jury Instructions (Apr. 2016), http://www.aipla.org/learning-
center/library/books/otherpubs/Pages/default.aspx?utm_source=PDN+Dec.+18&utm_
campaign=PDN6.12&utm_medium=email archived at https://perma.cc/U7BV-XSEE
[hereinafter Fed. Circuit Bar Ass’n]; U.S. District Court for the Northern District of Calif.,
Model Jury Instructions (July 2015), http://cand.uscourts.gov/juryinstructions archived at
https://perma.cc/E93A-KGLK; U.S. District Court for the District of Del., Uniform Jury
