Thursday, August 15, 2019

ED Texas - Judge Gilstrap Changes Playing Field with Patent Eligibility

Here's something to raise the expense of the patent eligibility defense.

An article in Law 360, Judge Gilstrap Changes Playing Field with Patent Eligibility (subscription required), describes an ED of Texas local rule requiring a defendant to state its factual contentions of what is "known" and "conventional" in support of any patent ineligibility defense under 35 U.S.C. 101 within 45 days of receiving the patent owner's disclosure of the asserted claims and infringement contentions.

Sure it's ED Texas local rule, and thus not governing other courts, but this rule appears to implement the CAFC's Berkheimer v. HP decision that among other things states whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. If other courts adopt this local rule, it would increase the defendant's cost of asserting the patent ineligibility defense.

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