When Eligibility is a Jury Question

by Dennis Crouch

In my recent Berkheimer post, I wrote that “that no court following Berkheimer has … attempted to get a jury verdict on the issue.”  Turns out that I’m potentially wrong.

In the pending case of Finjan, Inc. v. Juniper Network, Inc. (N.D. Cal. 2018), Judge Alsup has ordered a jury trial on the “inventive concept” question.  In its order, denying summary judgment, the court found that the Claim 10 of Finjan’s  U.S. Patent No. 8,677,494 was directed to the abstract idea of “collecting data, analyzing data, and storing results.” (Alice Step 1).  However, the court decided to wait for trial to determine the inventive concept question:

Juniper contends that Claim 10 of the ’494 patent contains no inventive concept sufficient to transform its patent-ineligible subject matter into a patentable invention under Alice step two. At this juncture, this order will postpone on reaching the issue of whether Claim 10 survives under Alice step two. Rather, the Court will wait to have the benefit of the trial record before determining whether Claim 10 contains an inventive concept such that it is patent eligible.

[Finjan District Court Order]

Trial is scheduled to start in December and the parties are now fighting over jury instructions. The patentee suggests the following jury instructions on the inventive concept question:

For purposes of this case, you must determine whether Claim 10 contains an inventive concept. In order to prove that Claim 10 does not contain an inventive concept, Juniper must persuade you by clear and convincing evidence that all of the elements of Claim 10, both individually and as an ordered combination, were well-understood, routine, and conventional at the time of the invention.

Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the field at the time of the invention. The mere fact that something is disclosed in a publication, for example, does not mean it was well-understood, routine, and conventional at the time. If you find that Claim 10 contains an inventive concept, then it is valid. If you find that Claim 10 does not contain an inventive concept, then it is not valid.

The patentee would not ask the jury to whether an inventive concept exists, but only the ultimate question – is the patent valid under Section 101. The proposed form question is below:

The accused infringer (Juniper) doesn’t appear to be objecting to the issue going to the jury (although it may have objected elsewhere).  However, Juniper has major problems with the above proposed instructions.  Probably most importantly, Juniper argues that the jury will need to understand the abstract idea exception, and understand that the innovative concept must go beyond the abstract idea itself.  “i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice.  I don’t believe that Juniper has submitted its competing proposed verdict form yet.

This is a case where the rubber seems to be meeting the road. The Supreme Court seems to have made clear that eligibility itself is a question of law and a threshold question for courts to decide (rather than juries).  This makes me think Judge Alsup may be setting-himself up for reversal.

21 thoughts on “When Eligibility is a Jury Question

  1. 7

    Dennis – You describe the Judge as indicating the Judge wanted to wait for the trial record. I don’t interpret that as meaning the jury would decide the point.

  2. 6

    There are other district court cases where the issue of whether 101 is decided by the judge or jury (assuming disputed factual issues under Alice Step 2) has been addressed and debated.

    But I think you have misunderstood the district court’s order, Dennis. Judge Alsup did not say that the jury is actually deciding the 101 issue; his order simply says that the Court’s determination under 101 will occur after development of the trial record. That same order used the exact phrasing about several claim construction disputes; he’ll settle on a construction after development of the trial record. He no more said that the jury will decide 101, than he said the jury will decide claim construction.

    And don’t get head faked by submission of a jury verdict form by one party. That doesn’t mean the jury will actually hear the 101 issue, let alone decide it. Judge Alsup could submit the 101 issue to the jury in a purely “advisory” capacity under FRCP 39(c), which means its verdict on 101 would have no legal effect but may be persuasive (or not) to the court.

  3. 5

    What you now post as what Diehr stands for is in direct contrast to what you desire at post 1.

    I’ve no idea what you’re talking about. Show everyone the “direct contrast.” Explain it, using English words and direct sentences.

  4. 4

    Many courts have moved away from the whole “inventive concept” inquiry for 101 as the S.Ct.’s inartful way of expressing the “new and useful” language of the statute. In this context, rather than injecting 102 into 101, many courts have followed the more reasoned approach of determining whether the claims tell “how” the invention is realized as opposed to essentially claiming the goals of the invention or mere application on a computer. See e.g. Electric Power Group, Finjan v Blue Coat Systems, and Morse. Applying the “how” approach allows claims to pass 101 and be separately unanalyzed under 102/103, as clearly intended by Congress.

    1. 4.1

      Many courts have moved away from the whole “inventive concept” inquiry for 101 as the S.Ct.’s inartful way of expressing the “new and useful” language of the statute.

      That is good news, if true, because the phraseology is unhelpful at best.

      But the Supreme Court is not so much to blame as are the attorneys who take whatever “loose” language they find and proceed to turn it into nonsense that makes even less sense than the words the Supremes used.

      The actual issues — including the fundamental policy and Constitutional issues underlying subject matter eligibility jurisprudence — are not so confusing, nor are the reasonable, logical means that I and others utilize on a frequent basis to determine whether a claim is impermissibly protecting ineligible subject matter.

      1. 4.1.1

        You remain a legend in your own mind.

    2. 4.2

      Re: “the whole “inventive concept” inquiry for 101 as the S.Ct.’s inartful way of expressing the “new and useful” language of the statute.”
      Nope. The frequently listed Sup. Ct. case law exceptions to what is not patentable subject matter precedes 101 and is not based on that 101 language. Diamond v. Chakrabarty, for example, lists Supreme Court prior such decisions and their dates for holding claims directed to an abstract idea, law of nature, or natural phenomenon, unpatentable subject matter.

      1. 4.2.1

        Only partially correct Paul.

        The “preceding” stems from the fact that the Act of 1952 took a preceeding paragraph and reset the law, eliminating the prior power shared with the Judicial branch to use Common Law law development on “invention,” “gist of the invention” and dozens of like terms and instead- opted for “non-obviousness.”

        I’ve covered this history countless times now.

  5. 3

    The Supreme Court seems to have made clear that eligibility itself is a question of law…

    Apparently this is NOT clear.

    At all.

    1. 3.1

      Wow this “inventive concept” is so clearly the flash of genius redux.

      Just vile.

      1. 3.1.1

        >Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the field at the time of the invention.

        Nothing like 103 at all. Just a 103 without bounds. Just how do you feel about it.

        1. 3.1.1.1

          Night, look at this craziness: “Probably most importantly, Juniper argues that the jury will need to understand the abstract idea exception, and understand that the innovative concept must go beyond the abstract idea itself. “i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice.” LOL. But your honor, how can we burn the straw man, if we first don’t ignore the claims and erect the [innovative concept, gist or heart or whatever test that was abolished under the ’52 Act]? This is the worst SCOTUS since the 70’s.

      2. 3.1.2

        Night Wiper Wow this “inventive concept” is so clearly the flash of genius redux.

        It’s nothing at all like that. The so-called “flash of genius” was a test that was used to invalidate claims based on the degree of the insightfulness that led to the claimed innovation.

        The so-called “inventive concept” aspect of the eligibility analysis is used to ensure that claims do not protect ineligible abstractions, which are a kind of innovation that are not protectable by a patent.

        1. 3.1.2.1

          Kind of innovation…?

          Coming from one who provides no evidence of knowledge or appreciation of what innovation is, that you think of “kinds of” innovation is…

          …well, stultifying.

  6. 2

    DC The Supreme Court seems to have made clear that eligibility itself is a question of law and a threshold question for courts to decide (rather than juries).

    It’s a “threshold” question only in the sense that if it can be determined immediately that a claim is ineligible, then that determination should be made before getting into whether the ineligible subject matter is, e.g., non-obvious, or enabled, or anticipated. Sometimes that determination is possible. Other times the eligibility issue will resolve (or reveal) itself only after the non-abstract elements of the claims are determined (or admitted) to be anticipated or obvious. There’s nothing remotely “wrong” or “illegal” about this latter set of circumstances.

  7. 1

    Probably most importantly, Juniper argues that the jury will need to understand the abstract idea exception, and understand that the innovative concept must go beyond the abstract idea itself. “i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice.

    Well done, Juniper. More accurately, any claimed “concept” sufficient to take a claim with eligibility issues out of 101 should be devoid of any ineligible abstractions, in addition to being “inventive” (i.e., non-obvious).

    That’s the only workable test that makes sense. Anything else and you might as well just ask the jury which of the attorneys (patentee or defense) has a better hair stylist.

    1. 1.1

      More accurately, any claimed “concept” sufficient to take a claim with eligibility issues out of 101 should be devoid of any ineligible abstractions,

      Devoid of any….?

      You mean, like Diehr….?

      (in other words, ALL that you are doing is peddling your same propaganda as usual – completely unattached even to the broken scoreboard)

      1. 1.1.1

        Diehr stands for a simple proposition: the presence of some eligible or ineligible subject matter somewhere in a claim is not determinative of the eligibility of that claim.

        That’s it. Trying to take more out of that case is a pointless exercise.

        1. 1.1.1.1

          What you now post as what Diehr stands for is in direct contrast to what you desire at post 1.

          That’s why I offered that comment.

          How Trump of you not to get it.

          1. 1.1.1.1.1

            “anon”: What you now post as what Diehr stands for is in direct contrast to what you desire at post 1.

            I’ve no idea what you’re talking about. Show everyone the “direct contrast.” Explain it, using English words and direct sentences.

            1. 1.1.1.1.1.1

              You having “no idea” is a you problem and the direct English words are already there in black and white.

              Maybe you should try to understand the words that you are using…

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