Moore, Taranto and Stoll are of one accord and blend well. I like all of them. The joined together against Reyna in the debate noted below:
First Pushback on Section 101 as a Fact Issue
It didn’t take long to get our first vote for en banc review of the Federal Circuit’s Berkheimer decision on Section 101 procedure. That’s the Feb. 8 decision that said applying the Supreme Court’s Alice test often will often raise factual issues that can’t be resolved on the pleadings or summary judgment.
There hasn’t literally been an en banc vote, of course. HP hasn’t even petitioned for en banc review yet. But when it does, we can count Judge Jimmie Reyna as one vote for taking it up, based on his dissent Wednesday in Aatrix Software v. Green Shades Software.
In Aatrix some of the same judges from Berkheimer addressed similar issues.Judge Kimberly Moore wrote that U.S. District Judge Harvey Schlesingerof Jacksonville, Fla., erred by granting a Section 101 motion on the pleadings without letting patent owner Aatrix amend its complaint. “There are concrete allegations in the second amended complaint that individual elements and the claimed combination are not well-understood, routine, or conventional activity,” Moore wrote. “We have been shown no proper basis for rejecting those allegations as a factual matter.”
Judge Richard Taranto concurred in Aatrix, as he had in Berkheimer. But the third member of the Berkheimer panel was Judge Kara Stoll. This time it was Reyna (pictured), and he is not buying in.
“I respectfully disagree with the majority’s broad statements on the role of factual evidence in a Section 101 inquiry,” he wrote. “Our precedent is clear that the Section 101 inquiry is a legal question.”
Moore’s approach opens the door to “an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.” That would “turn the utility of the 12(b)(6) procedure on its head” in the Section 101 context, Reyna wrote.
I could imagine a few other Federal Circuit judges agree with Reyna, but I doubt the votes will be there to go en banc. First, the Federal Circuit’s been reluctant to take a Section 101 case en banc. It hasn’t done so since Aliceitself in 2013, and that didn’t end so well.
Second, Moore is in the right here. In many cases, federal judges are not qualified to decide, based solely on the patent claims and specification, if something would have been considered routine or unconventional to a skilled artisan at the time of the patent. Moore is simply pointing out that this part of the Section 101 emperor has no clothes.
