Federal Circuit Says Expert Reports Cannot Save Claims Doomed by Alice

Jan 21, 2016

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The Federal Circuit disagreed. The court explained that a § 101 analysis may be undertaken without resolving fact issues and the issue may appropriately be resolved on a motion for summary judgment. “The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact,” the court wrote. In this case, the court found that the expert reports merely provided information on how people obtained mortgages in the pre-Internet era and added little to what was already disclosed in the patents. Mortgage Grader’s expert testified that the invention solved the problem of information asymmetry between borrowers and lenders, which had previously permitted lenders to steer borrowers to predatory loans. The court rejected that argument, noting that conflicts-of-interest and predatory lending were still possible when practicing the asserted claims. In the end, the court held that no reasonable factfinder could find, based on Mortgate Grader’s expert report, that the asserted claims were directed to patent-eligible subject matter.

Mortgage Grader, Inc., V. First Choice Loan Services Inc., No. 2015-1415 (Fed. Cir. Jan. 20, 2016) [O’Malley, Taranto, Stark (author)]

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