101 jurisprudence has bedeviled litigants for essentially forever. This lowly blog alone has more than 10 billion pages dedicated to 101 motions (or I don't know how to read the wordpress dashboard, that is also possible).
So, its a bit bonkers that there's still some fundamental questions about the 101 inquiry that have never been answered by the Federal Circuit. For instance, is there a jury right for underlying factual questions such as conventionality?
Judge Burke almost answered that question for us in Delaware last week in Stodge, Inc. v. Attentive Mobile, Inc., C.A. No. 23-87-CJB (D. Del. Nov. 7, 2025). But alas, it was not to be.
The defendant moved for summary judgment on its 101 defense. Judge Burke denied the motion citing factual disputes about whether the claimed system was "conventional." The next day, the defendant removed all references to the 101 issue from the PTO stating that "Attentive does not intend to present evidence regarding ineligibility . . . at trial because the Court’s definitive step one determination sufficiently preserved the 101 issue for appeal without requiring additional evidence at trial."
A little later, on the morning the jury trial began, they filed a motion for clarification requesting that "to the extent that the Court had found there to be remaining underlying disputed factual issues concerning patent eligibility (which it clearly had, as noted above), then the Court should address these disputes at a bench trial or at a hearing that would occur after the jury trial." Id. at 4. The court did not rule on the motion for clarification during trial, and apparently neither side had much to say about it until the whole thing was over.
After trial, plaintiff took the position that defendant had waived the right to present its 101 defense by removing it from the pretrial order, and further that the 101 issues need to be tried to a jury. Defendant took the position that it was actually plaintiff who had waived its jury right argument by not raising it at trial in response to the motion for clarification.
Judge Burke was undecided on the substantive jury right issue:
Now, was Attentive correct in its stated view that the Court (and not a jury) must ultimately resolve a Section 101 dispute like this one (i.e., one as to which there are material factual disputes)? Frankly, the Court is unsure of the answer. Indeed, the United States Court of Appeals for the Federal Circuit has deemed this an open and difficult question, and it has not yet taken a position on the issue.
Id. at 6.
The Court went on to hold that this uncertainty in the law weighed against waiver:
And under the circumstances here, the Court cannot say that Attentive’s acts in removing any reference to Section 101 from the PTO (and later asking the Court to resolve any remaining Section 101 disputes) indicates that Attentive intentionally relinquished a known right to anything.
Id.
Ultimately the Court agreed to address the issue on the merits at a short evidentiary hearing without a jury.
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