Thus far, the Federal Circuit has successfully ducked any direct holding on whether eligibility under 35 U.S.C. 101 is a “condition of patentability” or a proper invalidity defenes. Professor Hricik and I raised these issues in a number of posts back in 2012.
- David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
- David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense
- Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?
- David Kappos (Response), PTAB and Patentability Challenges
Following Hricik’s proposal, patentee and DJ Defendant RMail raised the issue in district court. [LINK] The district court followed tradition and held that ineligibility is a defense that can be raised in a district court challenge to patent infringement. After losing on the merits (summary judgment) the case is now on appeal and RMail again argues that “Ineligibility is not a litigation defense under §282(b).” In its brief, RMail writes:
Patent defenses are statutory. If a patent defense is not denominated within the Patent Act, then the Court lacks jurisdiction to address it. See Aristocrat Tech. Section 282(b) . . . enumerates the defenses that may be raised in a patent infringement action. . . . [T]he
plain language of §282(b)(2) does not authorize ineligibility as a defense.
A stumbling block for the patentee here is the Versata decision which held that the PTAB has authority to decide Section 101 challenges in a CBM review. The newly filed brief distinguishes that case, however, by arguing that “Versata relies on the legislative history of the AIA . . . not the legislative history of the 1952 Patent Act, which enacted §282(b)(2).”
In the end, I expect that history and tradition are strong enough to overcome the statutory gap, but it would be nice to see an explanation from the Court.
Read the brief: RMAIL 101 Challenge.