Document type: Toolkit Practice area: Intellectual Property — Patents Jurisdiction: United States (federal) Last reviewed: 5 September 2026

1. Eligibility screening memorandum

Prepare one per asserted patent, in the first two weeks.

PRIVILEGED — ATTORNEY WORK PRODUCT
SECTION 101 SCREEN — U.S. Patent No. __________
Prepared by: __________   Date: __________

1. CLAIM 1, IN FULL
   [Quote it.]

2. IN ONE SENTENCE, WHAT IS THIS CLAIM ABOUT?
   __________________________________________

3. ELEMENT ANALYSIS
   | Element | Mechanism / Generic / Functional result |
   [One row per limitation.]

4. STEP ONE ASSESSMENT
   Candidate characterization (movant): ______________
   Candidate characterization (patentee): ____________
   Does the movant's characterization account for every
   limitation? [ ] Yes [ ] No — which are ignored: ______
   Comparable Federal Circuit claims (held abstract): ______
   Comparable Federal Circuit claims (held eligible): ______
   ASSESSMENT: [ ] Likely abstract [ ] Likely not [ ] Close

5. STEP TWO ASSESSMENT
   Additional elements: ______________________________
   Specification statements on conventionality (quote with
   page:line): _______________________________________
   Ordered combination — ordinary sequence or not: ________
   ASSESSMENT: [ ] No inventive concept [ ] Arguable [ ] Yes

6. BERKHEIMER RISK
   Does the complaint plead unconventionality specifically?
   Is it supported by the specification?
   Does the specification resolve it against the patentee?
   ASSESSMENT: [ ] No factual dispute [ ] Genuine dispute

7. FILE HISTORY
   § 101 rejection? [ ] Yes [ ] No
   Arguments used to overcome: ______________________
   Prong Two integration argument (no court analogue)? ____
   Admissions: ______________________________________

8. RECOMMENDATION
   [ ] Rule 12 motion — strong
   [ ] Rule 12 motion — viable
   [ ] Summary judgment after limited discovery
   [ ] Not a viable § 101 challenge
   Estimated cost: $________  Probability: ______%

9. PORTFOLIO NOTE (patentee side)
   Related patents / pending continuations: ______________
   Effect of an adverse decision on the family: ___________

Drafting notes.

Section 3 is the analytical core. Sorting each limitation into mechanism, generic component, or functional result usually answers the question before you reach step one.

Section 5's requirement to quote conventionality statements with page and line turns the screen into brief material. Do it once, use it three times.

Section 8's probability estimate is what the client needs. A range is fine; "arguable" is not.

2. Specification admissions worksheet

The highest-value hour in the screen. Run these searches and record every hit.

SPECIFICATION ADMISSIONS — U.S. Patent No. __________

SEARCH TERMS (record every hit with page:line and full quote)
[ ] conventional          [ ] well known / well-known
[ ] standard              [ ] commercially available
[ ] any suitable          [ ] known in the art
[ ] typical / typically   [ ] ordinary
[ ] readily available     [ ] off-the-shelf
[ ] may be implemented using any
[ ] as would be understood by one of skill
[ ] general purpose computer / generic

STRUCTURAL REVIEW
[ ] Background describes a BUSINESS problem (quote)
[ ] Background describes a TECHNICAL problem (quote)
[ ] Background identifies a technical shortcoming of prior
    approaches (quote)
[ ] Detailed description explains HOW, at the mechanism level
[ ] Detailed description describes only WHAT is achieved
[ ] Figures show only generic boxes (list)
[ ] Data, benchmarks, or comparisons demonstrating a technical
    improvement (quote)
[ ] Statements that the approach departs from convention
    (quote)

NET ASSESSMENT
Admissions favoring the movant: ______ (list page:line)
Statements favoring the patentee: ______ (list page:line)

Drafting notes.

Both columns matter. A defendant needs the admissions; a patentee needs to know they exist before the motion arrives and to find the counterweight.

Quote in full, with citation. Paraphrase is useless in a brief.

Run this on every patent in the family, not just the asserted ones. The continuation you assert next has the same specification.

3. Representative claim chart

Attach to the motion. It forecloses the most common opposition argument.

REPRESENTATIVE CLAIM CHART
Representative claim: Claim 1

| Claim | Additional limitations beyond claim 1 | Category |
|   2   | "wherein the network is a wireless network" | Field of use |
|   3   | "wherein the processor is a mobile processor" | Generic component |
|   4   | "further comprising displaying the result on a
          graphical interface" | Post-solution activity |
|   7   | "wherein the weighting function is a linear
          combination" | Mathematical detail |
|  12   | [independent claim — system claim mirroring
          method claim 1] | Same subject matter, apparatus form |

Every asserted claim adds only (a) field-of-use limitations,
(b) generic computer components, (c) insignificant post-solution
activity, (d) mathematical detail, or (e) apparatus recitation of
the same method. None recites a technical mechanism absent from
claim 1.

Plaintiff has not identified any limitation in any other claim
that it contends changes the § 101 analysis.

Drafting notes.

The category column does the work. It groups the differences into the recognized buckets of things that add nothing, so the court can see the pattern rather than reading twelve rows of claim text.

The final sentence shifts the burden. After it, a generic objection that the movant addressed only one claim is inadequate; the patentee must name a limitation and explain it.

Do this even in a two-claim case. It takes an hour and it removes an argument.

4. Motion to dismiss — outline with drafting notes

MOTION TO DISMISS UNDER RULE 12(b)(6) — PATENT INELIGIBILITY

I.   INTRODUCTION
     Two paragraphs. What the claim is about; why generic
     computer implementation of it is not patentable; the
     relief sought.

II.  THE ASSERTED PATENT
     A. The claims (quote claim 1 in full)
     B. The specification's own description of the components
        [This is where the admissions go. Quote them.]
     C. The prosecution history, if relevant

III. LEGAL STANDARD
     § 101; the judicial exceptions; the two-step framework of
     Mayo and Alice; eligibility may be resolved on the
     pleadings; representative claims; construction is required
     only where the analysis turns on a disputed term.

IV.  ARGUMENT
     A. Claim 1 is representative
        [Chart, § 3 above.]
     B. Claim construction is not required
        [No disputed term affects the analysis; in the
        alternative, Defendant adopts Plaintiff's construction
        for purposes of this motion.]
     C. Step one: the claims are directed to [the abstract idea]
        1. What the claim recites
        2. The claim's focus is a result, not a mechanism
        3. Side-by-side comparison with [cases]
     D. Step two: no inventive concept
        1. Each additional element is generic
           [Quote the specification for each.]
        2. The ordered combination is the ordinary sequence
        3. No factual dispute under Berkheimer
           [The specification resolves it / the allegations are
           conclusory.]
     E. Amendment would be futile [if seeking prejudice]

V.   CONCLUSION

Drafting notes.

Section II.B is the section that wins motions, and most briefs bury it. Put the specification's conventionality statements in the background, in the patentee's own words, before any argument.

Section IV.B's alternative adoption of the patentee's construction is the single most effective procedural move in these briefs. It costs nothing if the claim fails either way, and it removes the argument.

Section IV.C.3's side-by-side chart beats string citations. Put the asserted claim and a claim held abstract in adjacent columns and mark the parallels.

Keep it short. Twenty pages is generous. A tight fifteen with a good chart reads better than thirty-five with a doctrinal survey.

Move for a stay of discovery in a separate short motion filed the same day.

5. Opposition — outline with drafting notes

OPPOSITION TO MOTION TO DISMISS

I.   INTRODUCTION
     What the invention actually is, technically. What the
     motion ignores.

II.  THE INVENTION
     A. The technical problem [quote the specification's
        background]
     B. What prior approaches did and why they failed
        technically
     C. The claimed solution, element by element
     D. Why the combination was unconventional at the priority
        date [quote the specification; cite the complaint's
        allegations]

III. LEGAL STANDARD
     Two-step framework; eligibility is rarely appropriate on
     the pleadings where factual disputes exist; Berkheimer and
     Aatrix; all inferences in the non-movant's favor.

IV.  ARGUMENT
     A. Defendant's characterization ignores the claim language
        [Identify the specific limitations omitted and what they
        require technically. THIS IS THE MOST IMPORTANT SECTION.]
     B. Step one: the claims are directed to a specific
        technical improvement
        [Side-by-side with cases holding comparable claims
        eligible.]
     C. Step two: the ordered combination supplies an inventive
        concept
     D. At minimum, factual disputes preclude dismissal
        [Identify the specific element or combination, the
        evidence, and why it cannot be resolved now.]
     E. Defendant's representative-claim treatment is improper
        [ONLY IF you can name a limitation in another claim and
        explain how it changes the analysis.]
     F. Claim construction is required
        [ONLY IF you identify the term, propose a construction,
        and explain how it changes the result.]

V.   IN THE ALTERNATIVE, LEAVE TO AMEND
     [Attach a proposed amended complaint.]

VI.  CONCLUSION

Drafting notes.

Section IV.A wins or loses the opposition. The movant characterized the claim at some level of abstraction; your job is to show the characterization is untethered. Name the limitations it ignores and say what they require.

Sections IV.E and IV.F carry warnings for a reason. Making either argument without doing the work — naming the limitation, naming the term and proposing a construction — is worse than not making it, because it signals you could not.

Section V should be real. Attach the proposed amended complaint with the eligibility allegations from § 6 below. Courts grant leave more readily when they can see what the amendment would say.

6. Eligibility allegations for a complaint

Insert into the complaint before the infringement counts.

THE '___ PATENT ADDRESSES A TECHNICAL PROBLEM

__. Before the priority date, [systems in the field] operated by
[describe the conventional approach, technically]. See '___
Patent at [col:line].

__. That approach suffered from [the specific technical
shortcoming — latency, storage cost, failure mode, scaling
limit]. As the specification explains, "[quote]." Id. at
[col:line].

__. The inventors developed [describe the mechanism at the level
the claim recites it]. Specifically, the claimed method [state
the distinguishing technical operation].

__. This approach was not well-understood, routine, or
conventional at the priority date. [State why, specifically:
prevailing practice was X; the claimed approach does Y; the
specification describes the departure at col:line.] To
Plaintiff's knowledge, no prior system [did the specific thing].

__. The claimed combination improves the functioning of
[the technology] by [the specific technical improvement], as
described at [col:line] and demonstrated by [data, benchmarks,
comparative results, if any].

__. The claims do not preempt [the general field]. They are
limited to [the specific mechanism], leaving [alternatives]
available.

Drafting notes.

Every paragraph must be supported by the specification, with a citation. These are judicial admissions and they will be tested in discovery.

Do not plead legal conclusions. "The claims recite an inventive concept" adds nothing. "No prior system limited metric propagation to two hops" is a fact.

The preemption paragraph is optional but useful. It addresses the doctrine's stated rationale directly.

Write these paragraphs before filing suit, not after the motion. If you cannot write them from the specification you have, that is information about which patent to assert.

7. Conventionality declaration — outline

For summary judgment. Adapt for either side.

DECLARATION OF [NAME] REGARDING THE STATE OF THE ART

1. QUALIFICATIONS
   Education, experience, publications, and why I am a person
   of at least ordinary skill in the relevant art.

2. LEVEL OF ORDINARY SKILL
   [Define it as of the priority date: education plus years of
   experience in the specific field.]

3. MATERIALS REVIEWED
   The patent, the file history, the identified prior art, the
   listed publications and product documentation.

4. THE STATE OF THE ART AT THE PRIORITY DATE
   [What practitioners actually did. Cite contemporaneous
   publications, standards, product documentation, and
   textbooks — not the patent itself.]

5. THE CLAIMED COMBINATION
   5.1 [Element by element: was this element, standing alone,
       known and routinely used? Cite evidence.]
   5.2 THE ORDERED COMBINATION: was this arrangement known and
       routinely used? [This is the question that matters.]
   5.3 [If opining it was unconventional: what practitioners
       did instead, and why they did not do this.]

6. TECHNICAL IMPROVEMENT
   [Whether the claimed arrangement produces a technical
   improvement, and what it is, in measurable terms if
   possible.]

7. CONCLUSIONS

I declare under penalty of perjury that the foregoing is true
and correct.

Drafting notes.

Section 5.2 is the declaration. Element-by-element conventionality is easy to establish and rarely decisive; the ordered combination is what step two actually asks about.

Cite contemporaneous evidence, not the patent. A declaration whose only support is the patent's own background section is circular and courts say so.

Beware the cross-use. A patentee's declaration establishing unconventionality is evidence on obviousness; a defendant's declaration establishing conventionality is evidence the patentee will use on secondary considerations. Coordinate with the invalidity team before it is served.

8. Response to a Section 101 rejection

RESPONSE TO OFFICE ACTION — 35 U.S.C. § 101 REJECTION
Application No. __________

REMARKS

I. THE CLAIM DOES NOT RECITE A JUDICIAL EXCEPTION
   (Step 2A, Prong One)
   The Examiner asserts the claim recites [a mathematical
   concept / a method of organizing human activity / a mental
   process]. Applicant respectfully disagrees. [Explain why the
   claim does not fall within the identified grouping: it cannot
   practically be performed in the human mind; it is not a
   fundamental economic practice; it is not a mathematical
   relationship as such.]

II. IN THE ALTERNATIVE, THE CLAIM INTEGRATES ANY EXCEPTION INTO
    A PRACTICAL APPLICATION (Step 2A, Prong Two)
   A. The claim recites an improvement to the functioning of
      [a computer / the relevant technology]
      [Identify the improvement. Cite the specification at
      col:line where it is described. Identify the claim
      limitations that reflect it.]
   B. [If applicable] The claim applies the exception with a
      particular machine
   C. [If applicable] The claim effects a transformation
   D. The claim imposes meaningful limits beyond generally
      linking to a field of use

III. IN THE FURTHER ALTERNATIVE, THE ADDITIONAL ELEMENTS AMOUNT
     TO SIGNIFICANTLY MORE (Step 2B)
   [The elements, individually and as an ordered combination,
   are not well-understood, routine, and conventional. Cite the
   specification; attach a declaration if available.]

IV. CLAIM AMENDMENTS
   [Amendments adding technical specificity, with support cited
   from the specification as filed.]

V. INTERVIEW REQUEST

Drafting notes.

Prong Two is where most applications succeed, and the argument must connect three things: the improvement described in the specification, the claim limitations that recite it, and why those limitations are more than generally linking to a field of use.

Amendment usually beats argument. Adding the mechanism that shows the improvement is faster than persuading an examiner that a functional claim recites one.

Remember the litigation gap. An allowance obtained through Prong Two has no counterpart in court. Record that in the allowance memorandum below.

9. Specification drafting guide and conversion table

The background section, three paragraphs:

[1] In [field], [systems / methods] operate by [describe the
current technical approach specifically — components, sequence,
data flow].

[2] This approach has technical limitations. [State them
concretely: the control-plane latency grows with node count; the
index must be rebuilt on every write; the sensor cannot resolve
features below X; the buffer overruns at Y throughput.] As a
result, [technical consequence].

[3] There is a need for [the technical capability the invention
provides], which the systems described below achieve by
[mechanism, one sentence].

Functional-to-mechanism conversion table:

Do not write Write instead
determining a priority computing a priority value as a weighted sum of queue depth and elapsed wait time
analyzing the data applying a sliding-window transform of length N to the sampled values
processing the request parsing the request into a header portion and a payload portion and routing each to a separate queue
storing the record writing the record to a first table indexed by a hash of the identifier and a second table indexed by timestamp
generating a report rendering a display in which each element is positioned according to its computed score
optimizing the route selecting the route minimizing the sum of segment costs, where each segment cost is computed as ...
identifying a match comparing the feature vector to stored vectors and selecting those within a threshold cosine distance
a computer system configured to a processor executing instructions that cause it to [specific operations, in order]

Words never to use in a specification:

conventional · well known · standard · commercially available · any suitable · known in the art · off-the-shelf · general purpose computer · as would be understood · typical

Substitutes that do not create admissions: "the system employs," "in one embodiment the component is implemented as," "suitable implementations include," followed by specifics.

10. Allowance memorandum

One page, written when claims are allowed. Costs an hour; worth a great deal six years later.

FILE MEMO — ELIGIBILITY ASSESSMENT AT ALLOWANCE
Application / Patent No.: __________   Date: __________

1. HOW ALLOWANCE WAS OBTAINED
   [ ] No § 101 rejection
   [ ] Prong One argument (claim does not recite an exception)
   [ ] Prong Two integration argument — NOTE: NO COURT ANALOGUE
   [ ] Step 2B argument
   [ ] Claim amendment adding technical specificity

2. LITIGATION-FRAMEWORK ASSESSMENT (two-step)
   Step one — is the claim directed to an exception?
   Step two — inventive concept?
   ASSESSMENT: [ ] Would likely survive [ ] Close [ ] Would
   likely fail

3. SPECIFICATION SUPPORT
   Technical problem stated at: col___:___
   Technical solution described at: col___:___
   Statements supporting unconventionality: col___:___
   ADMISSIONS (conventionality language): col___:___ [flag]

4. CLAIM INVENTORY
   Most technical / most defensible claim: ______
   Broadest claim: ______
   Claims relying on Prong Two only: ______

5. RECOMMENDATION
   [ ] File a continuation with narrower technical claims
   [ ] Portfolio is litigation-ready
   [ ] Assert only claims ______ in any enforcement action

11. Portfolio assessment worksheet

For a patentee before enforcement.

PORTFOLIO § 101 ASSESSMENT — Family: __________

| Patent | Claim | Directed to | Mechanism recited? | Spec
  admissions? | Survival estimate | Reads on target? |

RANKING FOR ASSERTION
1. ____________ (highest survival + reads on target)
2. ____________
3. ____________

DO NOT ASSERT
____________ (reason: ______________________)

PENDING CONTINUATIONS
Application ______: claims would be [more/less] defensible
Recommended action: [ ] Wait for issuance [ ] File new
continuation with technical claims [ ] Proceed now

CONSEQUENCE OF AN ADVERSE DECISION
Patents in the family sharing the specification: ______
Licensing conversations affected: ______________________
Recommended first case: ________________________________

12. Pre-suit letter (defense side)

[Date]
[Patentee's counsel]

Re: U.S. Patent No. __________ — Patent Eligibility

Dear [__]:

We write regarding your client's assertion of the '___ patent.

Claim 1 recites [summarize]. In our view the claim is directed
to [the abstract idea], and the additional elements — [list] —
are generic. The specification itself describes them as
conventional. See '___ Patent at col.__:__ ("[quote]"),
col.__:__ ("[quote]").

The Federal Circuit has held ineligible claims of comparable
scope in [case], [case], and [case], copies enclosed.

We intend to move to dismiss on this basis. Before incurring
that expense, we invite your client to withdraw its claims. If
it does so within [21] days, our client will not seek fees or
costs.

If your client believes the claims survive [*Alice*], we would
welcome an explanation of which limitations it contends supply
an inventive concept and what evidence supports that they were
unconventional at the priority date. We will consider any such
explanation in good faith.

Very truly yours,

Drafting notes.

The specification quotes are the letter. A generic assertion that the claim is abstract accomplishes nothing; the patentee's own words do.

The good-faith invitation at the end matters. It makes the letter a genuine attempt at resolution rather than a threat, which is how a court assessing an 35 U.S.C. § 285 motion will read it. It also occasionally produces a response that changes your assessment.

Send it early. A letter sent after the motion is filed builds no record.

13. Quick reference

Question Where it is decided Standard
Is the claim directed to an exception? Court, step one Question of law
Is there an inventive concept? Court, step two Law, with factual underpinnings
Were elements well-understood, routine, conventional? Fact-finder, if disputed Fact (Berkheimer)
Is a claim representative? Court Substantial similarity
Is construction required? Court Only if outcome turns on a term
Eligibility in an IPR? No 35 U.S.C. § 311
Eligibility in a PGR? Yes 35 U.S.C. § 321; 9-month window
Standard on appeal Federal Circuit De novo on law; clear error on facts
Fee shifting District court 35 U.S.C. § 285

Related documents

This toolkit is general information, not legal advice, and does not create an attorney-client relationship. Templates require adaptation by counsel to the patent, the record, and the district's practice.