Metro Detroit patent litigator Glenn Forbis spoke to Law360 about the biggest patent cases of the year. Several cases decided throughout 2018 are having, or will have, a significant impact on patent law, Forbis says.

One of those cases is Berkheimer v. HP Inc. This Federal Circuit ruling from February gives patent owners a much needed tool to fight back against the now-common 101 challenge in view of the Supreme Court’s Alice decision. The Berkheimer decision established that whether an allegedly non-abstract portion of a claim is “well-understood, conventional and routine” is a question of fact, making it more difficult for Courts and the PTAB to make that determination without reviewing actual evidence. One consequence is that district courts are less likely to dismiss the case early before at least some discovery occurs in the case.

The Berkheimer decision further resulted in a decidedly pro-applicant guidance memo from the USPTO (discussed by attorneys Nick Drysdale and Leanne Rakers on the Harness IP blog) that makes it more difficult for Examiner’s to reject claims based on subject matter eligibility under certain circumstances.

Forbis says that Berkheimer will also affect PTAB matters. “There have been more cases decided in favor of the patentee when the PTAB examines the factual basis of a finding that says an invention is invalid under Alice,” Forbis said. “Given the ability to look at the facts, courts will likely give patent owners more leeway in 2019 and going forward.”

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