Anthony Fuga is a Partner in Holland & Knight's Chicago office
The Eastern District of Texas is known to be a hotbed for patent litigation filings, even after the Supreme Court's TC Heartland decision. And within E.D. Texas, Judge Rodney Gilstrap has been the busiest sometimes presiding over nearly a quarter of the country's patent cases.
With that backdrop, it is unsurprising that Judge Gilstrap decided to introduce Section 101 subject matter eligibility contentions. The contentions, which are to be served within 45 days after receiving infringement contentions, must include a chart that identifies at least the following information:
- Each exception of eligibility (e.g., abstract idea, law of nature) to which each challenged claim is directed and the factual and legal basis to support the challenge;
- Whether any of the challenged claims are representative of other challenged claims;
- A description of the industry at the time the challenged claims are alleged to be well understood, routine, and conventional along with factual and legal support;
- A description of how each element of each challenged claim, individually and as a combination with other elements, was well understood, routine, and conventional in the relevant industry at the relevant time; and
- Identification of any other factual or legal bases for how the challenged claims are otherwise ineligible for patent protection.
Judge Gilstrap's standing order regarding subject matter eligibility contentions can be read here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.