Judge Andrews issued two new decisions invalidating patents under § 101 on motions to dismiss. The patents at issue in B# On Demand LLC v. Spotify Technology SA, C.A. No. 19-2077-RGA, D.I. 24 (D. Del. Sept, 8, 2020) and Aegis 11 SA v. Belkin International, Inc., C.A. No. 19-1161-RGA, D.I. 24 (D. Del. Sept. 9, 2020) were the computer-centric sort that one might have expected to be invalidated at some point in the case, it was surprising to see them decided at a motion to dismiss stage—especially in light of Judge Connolly's decision earlier this week granting yet another motion to dismiss on 101 grounds.
Aren't § 101 Motions to Dismiss Supposed to Be Harder Now?
The received wisdom is that § 101 challenges at the motion to dismiss stage are generally more difficult following the Federal Circuits Berkheimer decision which held that "[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018). Since a patentee will rarely concede that its invention is "routine," it stands to reason that a dispute on this fact issue would prove fatal to some substantial portion of § 101 motions to dismiss.
Data Shows No Noticeable Drop In Success Rate After Berkheimer
All these successful motions led me to wonder if the data actually bore out this sensible hypothesis, so I took a look and compared the success rate of Delaware § 101 motions to dismiss just before and just after Berkheimer was decided in February 2018. According to DocketNavigator:
- 15 such motions were decided in the year leading up to the decision, of which
- 2 (13%) were granted
- 10 (67%) were denied
- 2 (13%) were mixed results
- The last ended with a request for further briefing (the case was dismissed before an ultimate decision was reached).
The year immediately following the Berkheimer actually had markedly better results for defendants:
- 35 Motions decided, of which
- 13 (37%) were granted
- 15 (43%) were denied
- 7 (20%) were mixed results
Now, it's obviously unlikely that Berkheimer was responsible for making motions to dismiss for § 101 both more numerous and more successful. However, it certainly appears that any negative effect the decision may have had on these motions, it has been outweighed by other factors.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
