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.
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.