Blog Post

Oct 25, 2016

Patent-Eligibility and Questions of Fact

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Invalidity of a patent claim is a question of law based on underlying findings of fact. Challenges to patent-eligibility are no different, yet courts often determine §101 invalidity at the pleadings stage or, at the very latest, immediately following a Markman hearing. These determinations are typically based purely on legal questions such as claim construction and do not require any factual findings. However, the Eastern District of Texas recently denied invalidating software patent claims, at least for now, because the arguments against §101-based eligibility required the court to make factual determinations.
 
The case of Diamond Grading Technologies, Inc. v. American Gem Society, et al., (Case No. 2:14-cv-1161-RWS-RSP, September 12, 2016 report and recommendation) involved an invention that measured a gem for grading purposes. Defendant GIA moved for judgment on the pleadings and argued the claims lacked patent-eligibility under §101. The crux of their argument was that “each step of the claimed methods can be performed by a person with pen and paper using basic ray tracing techniques while following well-known mathematical formulas.” 
 
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