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.”
It is really hard to image how a worst group of people in terms of backgrounds and ethics could have been put together. Please. Disband the CAFC. Thanks Obama.
Allyson Ho representing HP? I was wonder why Ms. Ho tanked her constitutional argument in Oil States. This explains it.
Yeah, what is with that? I listened to the oral arguments and was stunned by how bad she was. She had no wall. It was a like a general retreat. I felt like she was showing a path to write an opinion counter to her position. Just abysmal.
link to youtube.com
“most excellent agent”
Is your last sentence missing a word?
I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis, 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).
Thanks!
To see it framed, “whether the invention describes well-understood, routine, and conventional activities” is jolting. Good grief, where is that test in the 101 statute? Alice, as in thru the looking glass, is where SCOTUS has taken us. Summary Judgment? Go figure, as these Alice motions are done on the pleadings, as in failure to state a claim as a matter of law, is the ONLY way this is reachable as a motion to strike a pleading. Patent law is not only the red headed step child of Con law, it’s now corrupting due process and the Fed.R.Civ.Pro.
Good grief, where is that test in the 101 statute?
I’ve discussed my own reservations with that (incorrect) language in my comment below.
But to respond to your comment: the Supreme Court’s role in our system of governance is to interpret statutes. As we all know, the current section 101 is unconstitutional on its face because it covers (among other things) the useful “process” of writing new instructions and the useful “process” of thinking about new correlations (or anything else that is new) and the useful “process” of communicating a new idea to someone.
In an effort to keep this p@ thetic j 0 ke of statutory drafting “alive” (and we should remember to blame some really short-sighted and not very thoughtful people for that drafting job instead of pretending that they were “wise men” — they weren’t; they were more like entitled id i0ts with the imaginations of ten year olds), the Supreme Court has held tightly to the so-called “judicial exceptions” which are really just Constitutional (mainly First Amendment) bulwarks.
Any eligibility test which allows one to “scriven through” the gate simply by couching the ineligible subject matter in some prior art (i.e., anticipated or obvious) context is a worthless eligibility test. Please ask me if you don’t understand why this is the case and I will walk you through the analysis. It’s very simple and very straightforward and the logic should be plain as paint to anyone who’s been in the game for more than a year or two. The bottom line is that looking at a suspect claim to see whether, in addition to the ineligible elements, there is something more recited besides prior art technology, is a necessary and inherent step for any eligibility paradigm.
“As we all know, the current section 101 is unconstitutional on its face”
Rewriting is clearly not the same as interpreting.
It is not within the authority of the Supreme Court to rewrite a statute to its own liking.
You profess to be an attorney, and yet fail to grasp one of the foundational aspects of our legal system (the Separation of Powers).
IF you really believed as you state, then your ongoing v0m1tfest should be along the lines of the Supreme Court acting appropriately and throwing out 35 USC 101.
But you don’t do that.
“the Supreme Court has held tightly to the so-called “judicial exceptions” which are really just Constitutional (mainly First Amendment) bulwarks.”
NOWHERE anywhere has the Supreme Court made this argument.
Ever.
You pulled this out of some dank place. Put it back.
As too “is something more recited besides prior art technology,” you AGAIN fail to account for the fact that when looked at each on their own, fully patent eligible (and patentable) claims may have individual elements that are:
– entirely not eligible
– entirely not patentable
Plainly stated, a claim may ONLY have elements that – of themselves – are neither eligible not patentable and yet – as a claim as a whole, be entirely eligible and patentable.
Until your rants align with this fact, all that you are doing is blowing (fetid) wind.
a claim may ONLY have elements that – of themselves – are neither eligible not patentable and yet – as a claim as a whole, be entirely eligible and patentable.
Can you show me an example of a claim consisting entirely of ineligible abstractions, where the claim “as a whole” is eligible?
Just curious (not really) about what you have in mind here.
What I have in mind is the plain and direct meaning of the simple English language that I have used.
Are you saying that these words are words that you do not understand?
MM, the otherwise eligible subject matter itself must be inventive, and not just barely new otherwise the 102/103 analysis (claim as a whole) would consider ineligible subject matter in the obviousness analysis.
In its petition for en banc rehearing, HP argues that the court improperly “asked ‘whether the invention describes well understood, routine, and conventional activities'” (HP Inc.’s Petition for Rehearing En Banc, p. 9 (citing the decision)), and argues that it should have asked “whether the claims ‘transform a patent-ineligible abstract idea into a patent-eligible invention.'” HP Inc.’s Petition for Rehearing En Banc, p. 10 (citing Alice, 134 S.Ct. at 2358).
Setting aside discussion regarding whether the language of “the invention describes…” accurately characterizes the court’s analysis, it seems like one problem HP may have is that one reason conventionality is relevant is that HP itself argued for summary judgment based in part on the fact that “[e]ach dependent claim sets out only well-understood, routine, and conventional activity that is insufficient to revive these patent-ineligible claims.” Berkheimer v. Hewlett-Packard Co., no. 1:12-cv-09023, Defendant Hewlett-Packard Company’s Brief in Support of its Motion for Summary Judgment Under 35 U.S.C. §101 filed Apr. 1, 2016 (document 155-1), p. 12 (N.D. Ill. Dec. 12, 2016).
HP now argues that the eligibility inquiry should involve looking at whether a claim includes recitation that “‘transform[s] a patent-ineligible abstract idea into a patent-eligible invention.'” HP Inc.’s Petition for Rehearing En Banc, p. 10 (citing Alice, 134 S.Ct. at 2358). One possible argument for why claim limitations are not sufficient to “transform a patent-ineligible abstract idea into a patent-eligible invention” might involve an assertion that a claim limitation is just conventional, and indeed this is what HP argued at the district court, arguing that “[e]ach dependent claim sets out only well-understood, routine, and conventional activity that is insufficient to revive these patent-ineligible claims.” Berkheimer v. Hewlett-Packard Co., no. 1:12-cv-09023, Defendant Hewlett-Packard Company’s Brief in Support of its Motion for Summary Judgment Under 35 U.S.C. §101 filed Apr. 1, 2016 (document 155-1), p. 12 (N.D. Ill. Dec. 12, 2016).
Given that HP sought summary judgment based on a factual allegation that “[e]ach dependent claim sets out only well-understood, routine, and conventional activity that is insufficient to revive these patent-ineligible claims,” HP seemingly itself made the factual question of whether each claim recites “well understood, routine, and conventional activities” relevant. Arguably, HP’s own factual allegation that “[e]ach dependent claim sets out only well-understood, routine, and conventional activity” set up a genuine dispute as to a material fact, thus rendering summary judgment inappropriate. See Fed. R. Civ. P. 56(a) (summary judgment is appropriate when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”)
That’s a lot of words to say “be careful of what you ask for.”
You gonna give me a heart attack. Amicus briefs are due 14 days after the petition. Fed Cir R. 35(g)
Thanks! You are correct. 14 days.
Federal Circuit local Rule 40(g)
Except by the court’s permission or direction, any brief amicus curiae or any motion for leave to file a brief amicus curiae must be filed within 14 days of the date of filing of the petition or response that the amicus curiae supports. If the amicus curiae does not support either party, then the brief or motion for leave to file the brief must be filed within 14 days of the date of filing of the petition.
Dennis: I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis,
Just curious: who on the CAFC does NOT agree with this facile observation? Follow up: who on the planet earth does NOT agree with this facile observation
Given that applicants are allowed to scriven anything they want into a claim, it’s inherently true that “underlying factual issues” are “possible” in the eligibility analysis of some claims.
In part, this is because of the long-recognized scenario where applicants attempt to ride on prior art technology by taking that prior art technology, re-scrivening it (or not) into different words, and then tacking onto it some ineligible subject matter (e.g., a description of information content or a step of “determining” something about a data ouput). That sort of “context couching” should never be permitted to work but, hey, people (i.e., judges, Examiners, the PTAB) make mistakes and stuff slips through. It happens to slip through far, far, far more often than it should, of course. And it’s the rare case by far when something that should be eligible ends up being blocked by misapplication of the basic rules of the 101 analysis. But here we are.
It’s also been observed correctly and countless times already that in most cases there is no non-frivolous factual dispute in most cases that suffer from eligibility problems. Once you take a minute to scratch below the surface of the scrivener’s gloss, the problems are obvious and so is the prior art and so is the implicit or express admission in the specification that the “innovation” lies in the ineligible.
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?
LOL Is this for real?? Did the majority in the CAFC panel actually suggest this??? ROTFLMAO How about just put that language in the claim? Oh and also don’t forget to throw in a wherein clause a la “wherein said method is non-obvious, enabled and satisfied written description”, too. Material fact! Material fact!
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”
The issue isn’t whether “the invention” describes well-understood activities. That would be no hurdle whatsoever. A toothless test. The issue is whether the otherwise eligible subject matter in the claim (e.g.., the elements in the claim that are not abstract, or not logic, or not information, or not natural phenomenon, or not mental steps) are themselves inventive and patentable. If it’s just a recitation of prior art tech or an obvious variation of prior art tech, then the claim is dead. Ineligible. That’s because you can’t protect ineligible subject matter by limiting it to some prior art context. Does anyone NOT understand why this is the case? I’m happy to explain it for the 1000th time. I think Dennis can probably explain it by now. He should give it a try at least. Because it’s correct and he can impress his students by being ahead of the curve.
elements – in and of themselves – do not “pass” or “fail” the 101 examination.
101 is the claim as a whole.
This is because (as much as you try to prevaricate and dissemble) claim elements – in and of themselves – may ENTIRELY be:
– each of itself ineligible
– each of itself not novel
– each of itself obvious
and it is the configuration – the claim as a whole that is which is being evaluated for 101.
Until your views and feelings can handle this plain fact, ALL that you do Malcolm is L I E.
elements – in and of themselves – do not “pass” or “fail” the 101 examination.
Sure they do. Elements can be eligible or ineligible. And any attorney who suggests otherwise is committing malpractice or does not understand the law. Or, like you, they are simply l i a r s reciting a script. News flash: your g@ rbage was stale eight years ago, “anon.” You lost. Grow the f up.
101 is the claim as a whole.
101 is a statute. Learn to write in English, Billy.
claim elements – in and of themselves – may ENTIRELY be:– each of itself ineligible
LOL Way to completely contradict yourself within the same comment. But we all know you can’t help it. That’s because you are trying to argue against something is incontrovertible. That’s why Prometheus was a 9-0 decision that will never, ever be overturned.
You’re just kicking up dust, “anon.” We all know that. It’s all you know how to do. Unfortunately for you, I know how to deal with tr 0lls. You’re a j0 ke and you dance for me. You’re a useful t0 0l. Everytime I blow the dust away, it’s easier for people to see how ridiculous, greedy and desperate you and your fellow maximalists are.
[shrugs]
“Sure they do. ”
No.
They do not.
As a matter of law.
You, a professed attorney should know better. Your Accuse Others as to malpractice is stultifying.
My remaining post using YOUR view is not contradictory.
It is an attempt to impress upon you that your attempted use simply does not support the conclusion that you want to reach.
“You’re just kicking up dust, “anon.” – – No, Malcolm, your Accuse Others meme is evident in your own dust-kicking by inserting Prometheus.
“ Unfortunately for you, I know how to deal with tr 0lls. You’re a j0 ke and you dance for me.”
LOL – you are a legend in your own mind. It is stultifying to think that you may actually believe the tripe that you post.
Billy 1: elements – in and of themselves – do not “pass” or “fail” the 101 examination.
Billy 2: claim elements – in and of themselves – may ENTIRELY be:– each of itself ineligible
Will the real Billy please stand up?
LOL
Who is Billy, and why is it that you are pretending to not understand an argument being put into your terms?
Might I state the obvious? It is a rare circumstance that a claim that is directed to an ineligible abstract idea can ever pass Alice step II. If the claim is directed to a new or improved machine, manufacture, composition, etc., it should pass both Alice step I and Alice step II. If a claim is directed to an ineligible abstract idea, it cannot also be directed to a new or improved machine, manufacture, composition, etc.
The problem is the word “directed.”
“If the claim is directed to a new or improved machine, manufacture, composition, etc., it should pass both Alice step I and Alice step II.”
How many times are you going to try to say that when every time you try, I point out the fact that certain claims in Alice itself were uncontested and averred to by both parties as having been directed to claims to a new or improved machine?
Yer more of that “mole” character of yours Ned.
Yet more you lose credibility.
anon, there is no doubt that Alice was poorly argued, just as was Oil States, with people making admissions that the Supreme Court ignored and hopefully, in the case of Oil States, will ignore.
Whether or not Alice was poorly argued has nothing at all to do with the immediate point at your comment of 2 and my reply at 2.1.
The bottom line Ned is that claims passing the statutory category part of 35 USC 101 – fully recognized as being “directed to” a hard goods item – FAILS the Court version of 101.
Your theory – wed to your “hard goods” bias – likewise FAILS.
anon, and it turns out that Oil States was argued by Allyson Ho, who is HP counsel. But HP was the on the opposite side in MCM v. HP.
Conflict of interest Ho.
An interesting side point that (again) has nothing to do with your post at 2 and my reply at 2.1.
A question of “predominantly” factual is more than just a little bit of a misnomer.
All that is required is that a factual predicate IS important. There is NO need for any sense of “predominantly.”
Comments are closed.