HP Inc. v. Berkheimer, 2018 WL 6445985 (On petition at the Supreme Court)
Steven Berkheimer has filed his brief in opposition in this pending case before the U.S. Supreme Court. As is a current theme in Supreme Court briefing, the parties have proposed alternative stories within their questions presented. HP’s original petition asks whether 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 its responsive brief, the patentee Berkheimer focuses more on the procedural aspect:
Whether the Federal Circuit correctly held that additional fact-finding was necessary to resolve whether patent claim limitations such as “storing a reconciled object structure in the archive without substantial redundancy,” and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items,” constituted “well-understood, routine, conventional activity” under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 79 (2012)?
The brief follows a toned-down approach – arguing that in some cases there will be an underlying factual dispute on eligibility issues. For Berkheimer, his patent involves one such case:
Whether a claim limitation consists of “well-understood, routine, and conventional activity” bears no resemblance to a question of law. In this case, for instance, the dependent claims recited: “storing a reconciled object structure in the archive without substantial redundancy,” and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.” . . . No statute, case, or deductive legal reasoning can resolve whether this “specific method of archiving,” constitutes “well-understood, routine, conventional activity, previously engaged in by those in the field.” Mayo. That is a quintessential factual question.
One question for the Supreme Court to consider is whether patent eligibility shifts as technology advances. I.e., as some particular machine becomes “conventional,” are advances using that machine more likely to be abstract? Berkheimer says “yes,” and that makes the underlying facts relevant to the question of eligibility.
I expect a number of briefs supporting Berkheimer’s position will be filed over the next fortnight.