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However, since the Federal Circuit had already held that ineligibility must be proven by clear and convincing evidence, "I think that this is really the natural consequence of Berkheimer,” said Charles R. Macedo of Amster Rothstein & Ebenstein LLP.
 

Potentially more impactful is another part of the decision about the type of evidence from patent owners that is sufficient to defeat a motion to dismiss on eligibility grounds, which “to me is a much bigger holding,” he said.
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What had been happening up to this point, Macedo said, is that those challenging patents have argued that because the patent owner did not write out in the specification that the invention is unconventional or solves specific problems, it is grounds for the patent to be found ineligible. The Federal Circuit's ruling means that if patentees can prove the invention has benefits, that's enough, regardless of whether they are spelled out in the specification, he said.  That is "more appropriate place for the law to be," he said. "There shouldn't be gamesmanship about draftsmanship. The question should be: Is the invention deserving of protection?"  As a result of the decision, if the patent owner can put up a good technical explanation of why the claims are unconventional and do not cover an abstract idea, “they now have a wider array of evidence that they can rely upon" beyond the language in the specification, he said.

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