Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 91 PTCJ 1433, 3/18/16. Copy-
right 姝2016 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PATENTS
Here We Go Round the Merry-Go-Round: How a § 101 Denial May Inform a
Subsequent Motion
BYNATALIE HANLON LEH AND NORA Q.E.
PASSAMANECK
With the explosion of 35 U.S.C. § 101 challenges
since Alice v. CLS Bank,
1
litigants and courts
are well familiar with its applicable two-part in-
quiry. Overlaying and shaping the Alice inquiry, how-
ever, are (1) the parties’ evidentiary burdens in address-
ing the Alice inquiry, and (2) the standard of review for
the particular motion raising the § 101 challenge.
Although the general standard of review for each
type of motion is well established, district courts dis-
agree regarding whether, within the procedural context
of each type of motion, a defendant must establish its
§ 101 challenge by a clear and convincing standard of
proof or some lesser standard. With the courts’ differ-
ing stances informing both the analysis and the result-
ing decision, the next question becomes what a denial
of any of these motions tells us about a subsequent
§ 101 challenge in the same case.
To address these issues, this article describes U.S.
Supreme Court and U.S. Court of Appeals for the Fed-
eral Circuit discussions of the burden of proof for § 101
challenges. With that foundation, this article discusses
how courts have applied these burdens in the context of
Federal Rule of Civil Procedure 12 and summary judg-
ment motions, and then addresses the practical effect of
those orders.
The article concludes by offering considerations for
bringing a subsequent § 101 challenge and/or preserv-
ing the issue in the case of the defendant, as well as
considerations for affirmatively raising the issue in the
case of the patentee.
I. Background: Conflicting Dicta on the
Standard of Proof
The general burden and standard of proof for each
type of procedural motion are well established. A Rule
12(b)(6) or 12(c) motion is limited to the pleadings and
those documents that are either incorporated into the
complaint or subject to judicial notice. The court must
accept all ‘‘well-pleaded facts as true,’’ and the movant
must establish that ‘‘there is no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law.’’
2
For a summary judgment motion, the court views the
facts in a light most favorable to the non-movant, and
the movant must establish the lack of a genuine issue of
material fact supporting the claim at issue.
3
But overly-
1
Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
2014 BL 170103, 110 U.S.P.Q.2d 1976 (2014) (88 PTCJ 513,
6/20/14)
2
Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).
3
Fed. R. Civ. P. 56(a).
Natalie Hanlon Leh is an experienced intellec-
tual property partner in WilmerHale’s Den-
ver office. She serves as lead counsel in pat-
ent, copyright, trademark and trade secrets
matters.
Nora Passamaneck is a senior associate in the
same office, with experience representing cli-
ents in complex intellectual property litiga-
tions, including patent litigations and licens-
ing disputes.
COPYRIGHT 姝2016 BY THE BUREAU OF NATIONAL AFFAIRS, INC. ISSN 0148-7965
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