Does Patent Eligibility Vary over Time? HP v. Berkheimer at the Supreme Court

by Dennis Crouch

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) is in my list of top-ten patent cases for 2018.  In the decision, Judge Moore vacated a lower court summary judgment ruling on eligibility -- holding that a "genuine issue of material fact" as to whether the claims are directed toward a transformative inventive concept rather than merely a "well-understood, routine, and conventional" application of an abstract idea.  Thus, the decision gave some amount of respect to the traditional procedures associated with providing facts.  Practically, this means that is should be more difficult to challenge patent eligibility on the pleadings or on summary judgment. Likewise, it means that examiners must do a bit more work to 'prove' the lack of eligibility.

Now, HP has petitioned the United States Supreme Court on the fundamental law-fact divide:

Whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

HP Inc., v. Steven E. Berkheimer, Supreme Court Docket No. 18-415 (2018).

A key claim of HP's brief is that "patent eligibility does not change over time with the state of the art."  The focus, according to HP is "analysis of the type of discovery sought to be patented."  I totally agree that HP's suggestion here should be the law -- eligibility need not enter into the question of novelty and non-obviousness.  The difficulty is how to deal with the the Supreme Court's focus on "whether the claims disclose an inventive concept" as step two of the eligibility analysis framework.

[Read the Petition]

An important aspect of this case is to consider whether HP is something of a wolf in sheep's clothing. Although HP clearly does not want to be liable to Mr. Berkheimer, HP also may be examining its portfolio that includes tens-of-thousands of patents -- many of which have questionable eligibility.

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In its decision, the Federal Circuit confirmed that claim 1-3 and 9 are ineligible, but that underlying facts are required to determine whether 4-7 are ineligible. U.S. Patent No. 7,447,713.

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.