How District Courts Are Approaching Alice’s Failure to Define ‘Abstract Ideas’

The 2014 Alice decision held that claims may be patent-ineligible as claiming “abstract ideas” based on a two-step inquiry. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). At Step One, it is determined whether the claim is “directed to” a “patent-ineligible concept” such as an abstract idea. If so, it is decided at Step Two whether the elements of the claim “considered individually” and as an “ordered combination” contain “something more,” such as an “inventive concept,” that transforms the invention into a patent-eligible application of the abstract idea.

In Alice, Justice Thomas dismissed the need to provide a definition for the “abstract ideas” exclusion, stating: “In any case, we need not labor to delimit the precise contours of the ‘abstract ideas’ category.” The Supreme Court’s decision to find a patent ineligible because it claimed an “abstract idea” without bothering to define that term has had disastrous consequences. It is also precisely the type of non-standard that should offend everyone. How can any stakeholder know what the law is or how they are to accord themselves if the critical term is purposefully left undefined?

It’s no secret that the patent eligibility inquiry under Alice is infamous for its subjectivity and unpredictability, which is what happens when courts refuse to provide clarity and instead embrace a vague and indefinite standard that can mean different things to different people. Indeed in Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1350 (Fed. Cir. 2018), Judge Plager’s dissent identified the absence of a definition as the root problem: “The phrase ‘abstract ideas’ is a definitional morass … There is no single, succinct, usable definition anywhere available.” And that allows judges on every level to do whatever they want without any structural tether to the law.

The American Axle case illustrated the sorry state of affairs of Section 101 jurisprudence. A petition for rehearing en banc produced a split 6-6 decision with six opinions addressing the patent eligibility of a drive shaft tuned to reduce vibration. American Axle & Manf’g, Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020) (per curiam). In the decision on panel rehearing, Chief Judge Moore stated that “Section 101 is monstrous enough” and that the rule applied by the majority “leaves patentees awash in a sea of uncertainty.” She was and remains exactly right.

Such is the state of Section 101 jurisprudence under Alice.

The 2018 Berkheimer and Aatrix Software Decisions

The 2018 Berkheimer decision had the potential to bring more certainty to the patent eligibility question.

In Berkheimer, Judge Moore held that Step Two is satisfied if “the claim limitations involve more than the performance of ‘well understood, routine, [and] conventional activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014)).

Additionally, Berkheimer held that “the question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact” that “must be proven by clear and convincing evidence” to invalidate the patent. Id. at 1368.

The court then vacated the determination of invalidity on summary judgment because there were disputed issues of material fact in the Step Two inquiry. Id. at 1370.

Less than a week later, the Federal Circuit issued its decision in Aatrix Software, Inc. v. Green Shades Software, 882 F.3d 1121 (Fed. Cir. 2018), which involved a decision of ineligibility based on a Rule 12(b)(6) motion. Aatrix Software reiterated the holding of Berkheimer that Step Two is met when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” (citing Content Extraction). Id. at 1128. Aatrix also held that Step Two is a question of fact.

So Berkheimer and Aatrix established two guideposts for the Alice exercise: (1) the Step Two inquiry is a question of fact where the challenger shoulders a clear and convincing burden of proof; and (2) Step Two is met if the claim elements involve something more than well-understood, routine, and conventional activities.

Many hoped that Berkheimer and Aatrix would bring more predictability to decisions on subject matter eligibility.

By and large, that does not seem to have happened. Many judges decide Section 101 challenges before trial and don’t address the burden of proof for Step Two. They effectively treat Section 101 as a pure question of law for the court, which is contrary to Berkheimer and Aatrix.

Some judges also decide patent-eligibility prior to claim construction, which is another source of concern. How can one determine whether a claim is directed to an abstract idea without first construing the claim? And, at a minimum, the proper construction must include review of the intrinsic evidence (i.e., the claims, specification and prosecution history) and may also include—and sometimes require—consideration of extrinsic evidence helpful to understand the science or technology, as well as the meaning of claim terms. See Teva Pharma. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015); Actelion Pharms. LTD v. Mylan Pharms. Inc., 85 F.4^th 1167 (Fed. Cir., 2023)(requiring district court to address extrinsic evidence as part of a proper claim construction). But somehow, in the context of a patent eligibility analysis judges and courts continue to somehow know with great conviction whether a claim is purely to an abstract idea—a term not defined—without a proper claim construction.

Experience with Having the Jury Decide Step Two

Despite the convoluted nature of what is often tolerated to pass as a thoughtful patent eligibility analysis, some courts are now correctly treating Step Two as a matter of fact to be decided by the jury. These courts are requiring the challenger to provide clear and convincing evidence that the elements of the claim do not recite anything more than well-understood, routine, and conventional activities.

Ollnova Technologies v. Ecobee (EDTX):  In Ollnova, the court had the jury decide Step Two, and that resulted in a determination that the patent was eligible under Section 101.

In Ollnova, Judge Gilstrap decided on a Rule 12(b)(6) motion that the invention was directed to an abstract idea under Step One, but there were open factual disputes on Step Two as to “whether the various elements in [the claim], alone or in combination, were conventional and well-understood at the time the patent was filed.” Ollnova Tech. Ltd. v. Ecobee Tech. LLC, No. 2:22-cv-00072-JRG, slip. op. at 16-18 (E.D. Tex. Sept. 21, 2022),

Judge Gilstrap sent the Step Two question to the jury, which found that defendant Ecobee failed to prove that the elements of the claim were merely well-understood, routine, and conventional. Below is the jury verdict form with that finding:

Ollnova Tech. Ltd. v. Ecobee Tech. LLC, No. 2:22-cv-00072-JRG, Dkt. 225 (Oct. 5, 2023).

After the trial, Ecobee argued that the jury instructions and the jury verdict form should have identified the abstract idea so that the jury could exclude it from the Step Two analysis. Ollnova Tech. Ltd. v. Ecobee Tech. LLC, slip. op. at 13 (E.D. Tex. Sept. 6, 2024). The court disagreed, holding that the Step Two analysis should consider the claim as a whole, as opposed to dividing it into abstract and non-abstract elements and having the jury focus only on the latter. Id. at 15-16.

The Ollnova case is now on appeal at the Federal Circuit in Ollnova Tech. Ltd. v. Ecobee Tech. LLC (App. Nos. 25-1045, 25-1046). Ecobee argues on appeal that the district court erred by allowing the jury to decide Step Two without being informed of the abstract idea and without being instructed to disregard the abstract idea in the Step Two inquiry. See Ecobee Resp. Br., 23-28. An amicus brief supporting Ecobee was filed on March 13, 2025, by former Director Kathi Vidal on behalf of amici including HP, SAP, and the High Tech Inventors Alliance. Dkt. 30.

G+ Communications v. Samsung (EDTX):  In G+, the court had the jury decide Step Two, which resulted in a determination that two claims of one patent were eligible and one claim from another patent was not eligible.

In G+ Communications LLC v. Samsung Electronics Co. Ltd., No. 2:22-cv-00078-JRG, slip. op. at 2 (E.D. Tex. Mar. 14, 2025), Judge Gilstrap found that the ’776 and ‘443 Patents were directed to abstract ideas, but that disputed factual issues remained for the jury to decide under Step Two. See Pretrial Transcript, Dkt. 518, 138:22-139:4.

The jury found that claims 1-2 of the ‘776 Patent were patent-eligible under Step Two. The jury found that claim 10 of the ’443 Patent was patent-ineligible:

G+ Comm. LLC v. Samsung Elec. Co. Ltd., No. 2:22-cv-00078-JRG, Dkt. 225 (Jan. 26, 2024).

Ultimately, the court issued a final judgment finding that the ‘776 Patent claims were patent-eligible, and that claim 10 from the ’443 Patent was patent-ineligible. G+ Comm. LLC v. Samsung Elec. Co. Ltd., No. 2:22-cv-00078-JRG, Dkt. 660 (July 3, 2025).

Infernal Technology v. Sony (EDTX): In Infernal Technology, the jury found the claims were not patent-eligible under Step 2. However, Judge Gilstrap determined after the verdict that the claims were patent-eligible because they were not directed to an abstract idea under Step One.

Specifically, the jury determined that four claims across two patents did not satisfy Step Two because they recited only conventional activities:

Infernal Tech., LLC v. Sony Interactive Entm’t, No. 2:19-cv-00248-JRG, Dkt. 341 (Oct. 7, 2021).

After the trial, Judge Gilstrap found that the claims were eligible under Step One because they were not directed to abstract ideas. Infernal Tech., LLC v. Sony Interactive Entm’t, No. 2:19-cv-00248-JRG, slip. op. at 3 (E.D. Tex. Dec. 7, 2021).

Innovation Sciences v. Amazon (EDTX): In Innovation Sciences, the jury found that all 13 claims were not patent-eligible under Step 2. Chief Judge Mazzant did not address Step One after the verdict because the claims were found invalid under Section 102. See Innovation Sciences, LLC v. Amazon.com Inc., No. 4:18-cv-00474-ALM, (E.D. Tex. Sept. 2, 2020), Dkt. 853 (jury verdict), Dkt. 857 (Sept. 4, 2020) (order denying JMOL).

PPS Data v. Jack Henry (EDTX): In PPS Data, Judge Gilstrap found that the claims were directed to an abstract idea on summary judgment but held that disputed issues of fact existed for the jury to decide Step Two. PPS DATA, LLC v. Jack Henry & Assoc., Inc., 2:18-cv-00007-JRG, slip. op. at 20-22 (E.D. Tex. March 21, 2019).

The jury found that all seven claims were not patent-eligible under Step Two. Dkt. 165 (Sept. 12, 2024). Judge Gilstrap’s final judgment found that the claims were invalid as being directed to patent-ineligible subject matter. Dkt. 179 (Sept. 13, 2019).

Natera v. CareDx (D. Del): In Natera, Chief Judge Connolly sent the Step Two question to the jury for two of the three asserted patents. The jury determined that the two patents were eligible under Step Two. Natera, Inc. v. CareDx, Inc., 1:20-cv-00038-CFC-CJB, slip. op. at 1, (D. Del. Feb. 24, 2025).

In the end, the court did not enter a judgment on patent-eligibility because the claims were found invalid for lack of written description following post-trial briefing. Natera, Inc. v. CareDx, Inc., 1:20-cv-00038-CFC-CJB, slip. op. at 6, (D. Del. Feb. 24, 2025). See Dkt. 563 (Mar. 10, 2025).

VB Assets v. Amazon (D. Del): In VB Assets, Judge Noreika found that three claims of three patents were directed to abstract ideas under Step One and sent the Step Two question to the jury. VB Assoc., LLC v. Amazon.com Services LLC, 1:19-cv-01410-MN, slip. op. at 11-16 (D. Del. Sept. 16, 2020). The jury found that all claims were eligible under Step Two. VB Assoc., LLC v. Amazon.com Services LLC, 1:19-cv-01410-MN, Dkt. 291 (Nov. 8, 2023).

As a result, Judge Noreika entered a final judgment finding the claims to be patent-eligible. DKt. 293 at 2 (Nov, 8, 2023).

TrackTime v. Amazon (D. Del): In TrackTime, Judge Noreika sent the Step Two question to the jury for two claims of the patent. The jury found that the claims were not eligible under Step Two. TrackTime, LLC v. Amazon.com Services LLC, 1:18-cv-01518-MN, Dkt. 309 at 5 (Jury verdict) (D. Del. Sept. 19, 2023).

Allowing the Jury to Decide Step Two: Is it Working?

The courts are doing the right thing by sending Step Two to the jury and instructing them to apply the clear and convincing evidentiary burden. Patent claims are supposed to be presumed valid—See 35 U.S.C. 282(a)—and invalidated only upon a showing by clear and convincing evidence. Microsoft v. i4i, 564 U.S. 91 (2011).

Whether juries are getting it right is a different question. And it’s nearly impossible to answer given that patent practitioners and courts often cannot agree on what is the “right” answer under the unworkable Alice framework.

Still, it is a move in the right direction to have factfinders apply Step Two using the clear and convincing standard. We hope that when judges decide patent eligibility—whether in response to a pretrial motion or a post-trial motion, or from a bench trial under Fed. R. Civ. P. 52—they apply the elevated burden of proof, which Justice Sotomayor explained in Microsoft v. i4i has been required to invalidate claims for more than a century.

Closing Thoughts

The Alice problem can only be fixed by the Supreme Court or Congress, and sadly so far neither has stepped up to the plate.

The Supreme Court has shown no appetite to clean up the mess. The American Axle case was an ideal candidate for clarifying Alice but cert was denied in June 2022. As of the writing of this article, the petition for cert in Broadband iTV v. Amazon.com challenging the treatment of Section 101 on summary judgment is pending. It would be a bit of a surprise if the Supreme Court takes up that case.

The Patent Eligibility Restoration Act (PERA) bill that effectively overturns Alice would resolve the issue. But it has yet to get a vote in the Senate Judiciary Committee since first being introduced in 2022.

In the meantime, we hope that faithful application of the holdings of Berkheimer/Aatrix continues to take root in the district courts, which should bring more certainty to the rights of patent holders.

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Author: Dazdraperma
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