by Dennis Crouch
In its February 2018 decision in Berkheimer v. HP, the Federal Circuit – led by Judge Moore – held that fundamental aspects of the patent eligibility test question are based upon questions of fact. That holding appears in tension with prior Federal Circuit holdings, such as Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332 (Fed. Cir. 2017) and OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015).
In its new petition for en banc rehearing, HP asks the court to reconser — raising particular questions:
- Is the threshold inquiry of patent eligibility under 35 U.S.C. § 101 a question of law without underlying factual issues that might prevent summary judgment?
- Is the appropriate inquiry under Alice’s step 2 whether the claims transform an abstract idea into a patent-eligible application, or merely “whether the invention describes well-understood, routine, and conventional activities”?
- Is a statement in a patent specification reciting that the invention is new and improves upon the prior art enough to create a genuine issue of material fact that precludes summary judgment as to patent eligibility under 35 U.S.C. § 101?
The case has good shot at being heard by the whole court. I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis, but would also hold that the exercise is not “a predominately factual one that ‘opens the door in both steps of the Alice inquiry for the introduction of an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.'” (HP Petition, quoting Judge Reyna’s dissent in Aatrix).
- Read HP’s petition here: Berkheimer_v._HP_Inc.
- Amicus filings have a quick timeline for en banc petitions (
7 days14 days?) - The brief quoted my blog post statement that the decision is “in substantial tension with prior treatment of eligibility analysis.”