For all of the recent turmoil and uncertainty surrounding patent-eligible subject matter, accused patent infringers know that today, invalidity under 35 U.S.C. § 101 is a viable defense against a wide variety of claims, and Section 101 invalidity is a defense that courts cannot ignore. Although some judges are decidedly unenthusiastic about confronting questions of patent-eligibility, in recent decisions, the U.S. Supreme Court has called Section 101 analysis a "threshold test" (Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218, 3225 (2010)), and stressed that other provisions that give rise to invalidity defenses—for example, 35 U.S.C. §§ 102, 103, and 112—are not "equipped" to perform the "screening function" provided by Section 101. Mayo Collaborative Services v. Prometheus Laboratories, Inc., ___ U.S. ___, 132 S. Ct. 1289, 1304 (2012).
Nonetheless, some lower courts—notably exemplified by the majority opinion in MySpace, Inc. v. Graphon Corp., 672 F.3d 1250 (Fed. Cir. 2012)—have openly stated their policy of deferring patent-eligibility questions until all other validity issues are decided. Attorneys, however, may find this reluctance frustrating. To paraphrase the late Justice Potter Stewart, most experienced practitioners will tell you that upon reading certain patent claims, they know potential Section 101 invalidity when they see it. So what is an accused infringer to do?