Chief Judge Rader’s (retired) opinion for the court in Ultramercial, Inc. v. HULU, LLC, 722 F.3d 1335 (Fed. Cir. 2013) was ultimately GVR’d (granted, vacated, and remanded) by the Supreme Court due to the Alice v. CLS decision. I think it is interesting, nevertheless, to review what Chief Judge Rader said about the factual nature of a §101 analysis:
First, it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter. This is so because every issued patent is presumed to have been issued properly, absent clear and convincing evidence to the contrary. See, e.g., CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1304-05, 2013 WL 1920941, *33 (Fed. Cir. May 10, 2013) (Chief Judge Rader, and Judges Linn, Moore, and O’Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.). Further, if Rule 12(b)(6) is used to assert an affirmative defense, dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 1339*1339 929 (2007); Jones v. Bock, 549 U.S. 199, 215, 127 S.Ct. 910, 166 L.Ed.2d 798 (2007). Thus, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility. For those reasons, Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule.
Second, as is shown more fully below, the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues. For example, while members of this court have used varying formulations for the precise test, there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept. CLS Bank, 707 F.3d at 1298-1302, 2013 WL 1920941 at *27-30 (meaningful limitations); Id. at 1282-83, 2013 WL 1920941 at *10 (opinion of Lourie, J.). Further, factual issues may underlie determining whether the patent embraces a scientific principle or abstract idea. Id. (opinion of Lourie, J.) (”The underlying notion is that a scientific principle … reveals a relationship that has always existed.”) (quoting Parker v. Flook, 437 U.S. 584, 593 n. 15, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)). If the question is whether “genuine human contribution” is required, and that requires “more than a trivial appendix to the underlying abstract idea,” and were not at the time of filing “routine, well-understood, or conventional,” factual inquiries likely abound. Id. at 1283-85, 2013 WL 1920941 at *11-12. Almost by definition, analyzing whether something was “conventional” or “routine” involves analyzing facts. Id. at 1284-85, 2013 WL 1920941 at *12. Likewise, any inquiry into the scope of preemption — how much of the field is “tied up” by the claim — by definition will involve historic facts: identifying the “field,” the available alternatives, and preemptive impact of the claims in that field. The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.