by Dennis Crouch
In Berkheimer, the Federal Circuit explained that underlying factual disputes might prevent a motion on the pleadings or summary judgment decision. In this post, I looked at four recent district court cases that cite Berkheimer.
In iSentium, LLC v. Bloomberg Fin. L.P., 2018 WL 5447503 (S.D.N.Y. Oct. 29, 2018), the district court considered Berkheimer but primarily cited to its statement that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” This was a case where additional facts were not necessary because the claim elements beyond the abstract idea were merely “a combination of elements is well understood, routine and conventional.”
In ECOSERVICES, LLC, Pl., v. CERTIFIED AVIATION SERVICES, LLC, 2018 WL 5629301 (C.D. Cal. Oct. 26, 2018) the district court had an interesting use of Berkheimer. In the case, the defendant did not file for summary judgment on eligibility but instead waited until post trial to make its eligibility motion. The district court found no waiver — noting particularly that post trial a good time because of the potential underlying facts that might be developed there. Citing Berkheimer. In fact, in that case the defendant relied “on trial testimony and the jury’s verdict for part of its argument, [as such] it was reasonable to wait to resolve the § 101 issue until after trial.”
In CardioNet, LLC v. InfoBionic, Inc., 2018 WL 5017913 (D. Mass. Oct. 16, 2018), the court ruled on a 12(b)(6) motion to dismiss. As such, the court limited the potential factual-dispute-inquiry to the allegations made in the complaint. However, the complaint did not include any particular “non-conclusory factual assertions” to create any dispute. As such, the court ruled the patent ineligible as a matter of law.
Finally in KROY IP HOLDINGS, LLC, Pl., v. GROUPON, INC., 2018 WL 4905595 (D. Del. Oct. 9, 2018), the magistrate judge refused to recommend dismissal of the case on the pleadings — finding that “questions of fact remain as to whether the asserted claims of the ’660 patent were conventional at the time of the patent, and unresolved issues of claim construction could potentially bear on the analysis.”