by Dennis Crouch

The well-worn advice to trial lawyers, famously captured by Carl Sandburg, has long been: "If the law is against you, pound on the facts. If the facts are against you, pound on the law. If both are against you, pound on the table."

This traditional dichotomy between law and fact reflects a fundamental principle of American jurisprudence - that certain questions are reserved for judges (law) while others are reserved for juries (fact).  And, even in cases where the judge serves both roles, the law provides for a strict separation of role. See FRCP 52(a).  But patent law doctrine often defies this clean separation. Take patent eligibility as an example: while courts characterize the atextual eligibility doctrine as ultimately a question of law, the analysis may require underlying factual determinations about what was conventional in the relevant field at the time of invention. And, even the "legal" aspects of eligibility analysis - like whether claims are "directed to" an abstract idea - require their own form of proof and evidence. The difference is that because courts have labeled these as questions of law, they bypass traditional evidentiary standards. This creates a peculiar framework where some elements of proof are subject to strict evidentiary requirements while closely related elements are left to judicial reasoning without similar constraints.  The problem has been further complicated in the eligibility area because the Federal Circuit has not generally required district courts to carefully separate their analysis between law and fact -- even at the pretrial stage where judicial factual conclusions are usually avoided.  These issues are raised to some extent in BBiTV's newly filed petition for certiorari, which challenges how courts handle disputed factual issues when deciding patent eligibility on summary judgment.

For me, BBiTV's argument raises deeper questions about how courts have arrived at this procedural framework for handling patent eligibility determinations. In my view, several historical developments in patent law have contributed to the current state of affairs, where judges increasingly make what appear to be factual determinations under the guise of eligibility legal analysis. These developments, combined with institutional pressures and uncertainties about the role of the Seventh Amendment in patent eligibility determinations, have somewhat blurred the distinction between law and fact. After reviewing the BBiTV case in particular, I move on to examine these contributing factors and their implications for how courts handle disputed facts in patent eligibility cases.