Aatrix Software, Inc. v. Green Shades Software, Inc.
890 F.3d 1354
Fed. Cir.2018Background
- Aatrix sued Green Shades for patent infringement; the district court dismissed under 35 U.S.C. § 101. The Federal Circuit panel reversed the Rule 12(b)(6) dismissal and the court denied rehearing en banc.
- The panel decisions in Aatrix and Berkheimer clarified that whether claim elements are “well‑understood, routine, and conventional” is a question of fact. That factual inquiry can affect step two of the Alice/Mayo § 101 framework.
- The court emphasized that the patent challenger bears the burden to prove ineligibility and must produce evidence that additional claim limitations are routine/conventional; admissions in the specification may be dispositive.
- Normal procedural standards apply: Rule 12(b)(6) requires accepting non‑conclusory factual allegations; Rule 56 requires denial of summary judgment if a genuine dispute of material fact exists. Federal Rules of Evidence and judicial‑notice principles govern what extrinsic material may be considered.
- Concurrences and dissents: concurring judges stressed the narrow scope—limited to treating the routine/conventional inquiry as factual and preserving established dismissal practice where appropriate; dissent argued this shifts § 101 from a legal question to a factual one, conflates § 101 with §§ 102/103, and warrants en banc review.
Issues
| Issue | Plaintiff's Argument (Aatrix) | Defendant's Argument (Green Shades/HP) | Held |
|---|---|---|---|
| Whether “well‑understood, routine, and conventional” is a question of fact | Aatrix: allegations that claimed elements improve computer functionality and are non‑conventional create factual disputes | Green Shades/HP: eligibility can be decided as a matter of law at the pleadings/SJ stages | Court: It is a question of fact; factual disputes preclude dismissal/summary judgment when supported by the record (Berkheimer/Aatrix) |
| Proper standard at Rule 12(b)(6) and Rule 56 for § 101 | Aatrix: pleadings alleging concrete, non‑conventional improvements must be credited at 12(b)(6) | Green Shades/HP: complaint can be dismissed if patent on its face claims only abstract idea | Court: Apply ordinary Rule 12(b)(6) and Rule 56 standards; accept non‑conclusory factual allegations at 12(b)(6); deny SJ if genuine fact dispute exists |
| Role of patent specification and extrinsic evidence in § 101 inquiry | Aatrix: specification and pleaded facts can show inventive concept or non‑conventional combination | Green Shades/HP: inventive concept must appear in claims; extrinsic allegations should not defeat dismissal | Court: Specification admissions can be binding; extrinsic evidence may create factual disputes but claims must still be examined—claims control the legal analysis |
| Whether en banc review was required to reconsider precedent that § 101 is legal | Aatrix: not directly seeking to overturn precedent but sought clarification that factual disputes can preclude dismissal | Petitioners (HP/others): argued need to reaffirm § 101 as a legal question | Court: Denied rehearing en banc; panel and concurrences emphasize narrow holding but dissent says the change is transformative and merits en banc review |
Key Cases Cited
- Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (two‑step framework for § 101; search for "inventive concept" at step two)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (§ 101 analysis may overlap with novelty/obviousness; additional steps must be more than routine activity)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (holding that whether claim elements are well‑understood, routine, and conventional can be a factual question precluding summary judgment)
- Thompson v. Keohane, 516 U.S. 99 (1995) (defining historical facts and the role of factual findings)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (procedural constraints on creating special rules for patent cases; claim construction can involve factual findings)
- Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369 (Fed. Cir. 2016) (inventive concept cannot rest on the natural law or abstract idea itself)