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June 25, 2019 Practice Points

With Alice Possibly Fading, Williamson Commands Attention

If Congress enacts proposed changes into law, focus will likely shift from section 101 to section 112(f) of the Patent Act as a vehicle for challenging validity early in patent litigation.

By Joe Edell

Congress recently proposed amendments to sections 101 and 112 of the Patent Act that would limit patent-ineligibility challenges and, at the same time, expand functional-claiming challenges. If enacted, the proposed § 101 amendments would undo the Supreme Court’s Alice test, and the § 112(f) amendment would codify the lowered functional-claiming standard that the en-banc Federal Circuit announced in Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).

In the years since the Supreme Court’s landmark 2014 Alice decision, attention has rightly focused on the raft of successful section 101 challenges across the country. But if Congress enacts these proposed changes into law, that attention will likely shift to section 112(f) as a vehicle for challenging validity early in patent litigation. Under Williamson, claims lacking specific “means for” language no longer enjoy a “strong” presumption against the applicability of section 112(f). This is significant because section 112(f) can narrowly restrict a claimed function to its corresponding patent-disclosed structure and equivalents, or render it invalid as indefinite if it isn’t clearly linked to such a structure.

The objective data on Williamson’s impact so far shows that its influence will likely grow. The district court decisions in the three years before and after Williamson show a spike in both the frequency and success rate of arguments that claim terms lacking “means for” language nevertheless are subject to section 112(f). In the three years before Williamson, litigants had a 24 percent success rate (25 out of 104 cases) when contending that a claim term lacking “means for” language was subject to section 112(f). In the three years after Williamson, litigants raised this issue in 64 percent more cases, with a 42 percent success rate (71 out of 171 cases). Thus, after Williamson, parties have succeeded 75 percent more often in arguing that claim terms without “means for” language were subject to section 112(f). These increases are especially stark considering there were 26 percent fewer patent-infringement cases filed during this same period.

Practitioners thus would be wise to stay abreast of decisions applying Williamson, and of the legislative outcome of these amendments. Indeed, the trends suggest that courts will be seeing Williamson arguments even more frequently if Congress removes the Alice test for section 101 challenges and codifies Williamson’s lower functional-claiming standard for section 112(f).

Joe Edell is an attorney in Fisch Sigler LLP’s Washington, D.C., office.

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