by Dennis Crouch
The Supreme Court has repeatedly held that patent eligibility is a question of law. However, in Berkheimer, the Federal Circuit added some nuance — writing that the issue can include underlying issues of fact. Judge Moore explained:
Berkheimer and Aatrix stand for the unremarkable proposition that whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.
Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018) (en banc denial). In the lawsuit between Mr. Berkheimer and HP, the result of the underlying-material-fact revelation meant that the case was improperly dismissed on summary judgment. Rather, on remand, the court will need to be presented evidence and make appropriate factual conclusions before ruling on the eligibility question.
In its petition to the U.S. Supreme Court, HP does not directly confront the Federal Circuit holding regarding underlying facts – but instead directs the the court to a non-decided question about whether Berkheimer makes eligibility a jury question.
HP v. Berkheimer Question: The question presented is 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.
In my view, the question presented by HP’s attorneys intentionally creates confusion as the Federal Circuit did not rule (1) that eligibility is a question of fact; or (2) that any aspect of the eligibility question goes to a jury. Rather, the Federal Circuit has repeatedly ruled, including in Berkheimer, that the question of “eligible subject matter is a question of law.” I’ll also note that no court following Berkheimer has seen eligibility itself as a question of fact or attempted to get a jury verdict on the issue. I contacted David Salmons (counsel of record for HP) to see what I’m missing about the misleading question, but he did not respond.
Despite my misgivings about the actual question asked, the petition implicitly raises important questions of (1) whether eligibility may be based upon underlying questions of fact; and (2) the relevance of the “state of the art” in eligibility analysis (i.e., what is an “inventive concept”).
The petition has some legs — with six amici briefs and a request from the court for a responsive brief from Berkheimer:
- Brief amici curiae of Electronic Frontier Foundation and R Street Institute
- Brief amici curiae of T-Mobile USA, Inc., and Sprint Spectrum L.P.
- Brief amicus curiae of Computer & Communications Industry Association
- Brief amicus curiae of Engine Advocacy
- Brief amicus curiae of Askeladden LLC
- Brief amici curiae of Check Point Software Technologies, Inc. and CableLabs
Of these briefs, Askeladden’s brief from Carter Phillips has an important section walking through jurisprudence on adjudicative facts vs legislative facts. Engine Advocacy’s brief was filed by Stanford Law Clinic Director Phillip Malone and does a good job of explaining how Post-Alice 101 is good at ending lawsuits early and cheaply, and that Berkheimer is upsetting that system. CCIA’s brief does a good job of walking through the ways that courts have been dealing with eligibility questions on the pleadings and at summary judgment. I have not fully read the others.
Mr. Berkheimer’s brief is due December 5, 2018 — We’ll do another post at that point talking through the various positions and the variety of issues raised in this important case. [Full Docket with Briefs].
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The patent at issue here is U.S. Patent No. 7,447,713, which issued back in 2008. At that time, I hardly even talked about eligibility in my patent law class because the door was so wide open. The ‘713 patent is broadly directed to “archiving and outputting documents or graphical items.” The Federal Circuit found claim 1 was properly held ineligible, but ruled that there were some underlying factual disputes about whether claims 4 and 5 crossed into the eligibility threshold.
Claim 1. A method of archiving an item comprising in a computer processing system:
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; [and]
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.
Claim 4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
Claim 5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.