The Procedure of Patent Eligibility

73 Pages Posted: 26 Apr 2018 Last revised: 21 Feb 2019

See all articles by Paul R. Gugliuzza

Paul R. Gugliuzza

Temple University - James E. Beasley School of Law

Date Written: February 19, 2019


A decade ago, the patent-eligible subject matter requirement was defunct. Several recent Supreme Court decisions, however, have made eligibility the most important issue in many patent cases. To date, debates over the resurgent doctrine have focused mainly on its substance. Critics contend that the Supreme Court’s case law makes patents too easy to invalidate and discourages innovation. Supporters emphasize that the Court’s decisions help eradicate the overly broad patents often asserted by so-called patent trolls.

Yet one important consequence of eligibility’s revival has been procedural. Because district courts often view eligibility to present a pure question of law, they are—for the first time ever—invalidating patents on motions to dismiss, ending infringement cases before the costly discovery process begins. The test for eligibility adopted by the Supreme Court, however, compares the claimed invention to the technology that predated the patent. That comparison, this Article argues, often involves disputes of fact, which means that courts should be more cautious about deciding eligibility on the pleadings than they currently are.

In two noteworthy decisions issued in early 2018, the Federal Circuit held that the question of patent eligibility does indeed have factual underpinnings, brushing aside precedent that seemed to treat eligibility as a purely legal matter. But these new decisions may go too far. By making it extremely easy for plaintiffs to create a factual dispute that prevents pre-trial adjudication, they threaten to nullify what this Article identifies as a key policy function of the eligibility requirement: providing a means for courts to quickly and cheaply dismiss infringement claims so plainly lacking merit that discovery is unwarranted.

In addition to examining the legal-versus-factual nature of eligibility doctrine, the Article analyzes several other important questions about procedure in eligibility cases that the lower federal courts—including judges and panels of the Federal Circuit—have answered in wildly divergent ways. Those questions range from the role of claim construction in the eligibility analysis, to the relevance of the statutory presumption of patent validity, to whether courts should decide eligibility when a case can be terminated on another ground. By engaging these vexing issues, the Article sketches a procedural framework for resolving eligibility that would allow courts to quickly invalidate “bad” patents while reducing the danger they will erroneously invalidate a “good” patent on an inadequately developed record.

Keywords: patents, civil procedure, patentable subject matter, Federal Circuit

Suggested Citation

Gugliuzza, Paul R., The Procedure of Patent Eligibility (February 19, 2019). Texas Law Review, Vol. 97, p. 571, 2019, Boston Univ. School of Law, Public Law Research Paper, Available at SSRN:

Paul R. Gugliuzza (Contact Author)

Temple University - James E. Beasley School of Law ( email )

1719 N. Broad Street
Philadelphia, PA 19122
United States

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