Judge Gilstrap Issues Standing Order Governing Subject Matter Eligibility Contentions

Aug 28, 2019

Reading Time : 1 min

Under the standing order, a party’s Eligibility Contentions are due at the same time as its Rule 3-3 invalidity contentions and must include:

  • Charts identifying:
    1. The eligibility exception to which the challenged claims are allegedly directed (e.g., abstract idea, law of nature or natural phenomenon) and the factual and legal bases supporting that contention.
    2. The industry in which each challenged claim was allegedly well understood, routine and conventional, and a description of how each element of each challenged claim (individually or in combination with the other claim elements) was well understood, routine and conventional in that industry at the relevant time, as well as the factual and legal bases supporting those contentions.
    3. Other factual or legal bases for how the challenged claims are otherwise ineligible for patent protection.
  • Detailed information about, and production of, all materials on which the challenger intends to rely.

Like a party’s Invalidity Contentions based on Sections 102, 103 and 112, Eligibility Contentions may be amended without leave of court only within 50 days of the court’s claim construction ruling and only if either (1) a party files Amended Infringement Contentions pursuant to Patent Rule 3-6(a) or (2) the party challenging subject matter eligibility believes in good faith that the court’s claim construction ruling requires amendment of the contentions. Any other amendment to a party’s Eligibility Contentions may be made only with leave of court upon a showing of good cause.

Practice Tip: Defendants should evaluate their subject matter eligibility positions carefully as soon as possible after being served with a patent infringement complaint and should understand that, as with contentions asserting other grounds for invalidity, the ability to amend Eligibility Contentions will be limited.

Share This Insight

Previous Entries

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.