The Berkheimer case has been pending for a while. Steven Berkheimer first filed his infringement lawsuit against HP back in 2012. (N.D. Ill.) In 2016, the district court dismissed the case on summary judgment — finding the claims ineligible. That decision included two key legal findings (1) eligibility is purely a question of law; and (2) the clear and convincing evidence standard does not apply to questions of eligibility. The appeal then took two years and in 2018 the Federal Circuit vacated that holding — finding that underlying issues of fact may be relevant here to the question of patent eligibility. Judge Moore explained in her decision:
While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.
Berkheimer (Fed. Cir. 2018). Following the Federal Circuit’s decision, HP then petitioned for writ of certiorari and that petition is still pending. In particular, briefing on the petition was completed in December 2018, but the Supreme Court then requested that the Solicitor General provide an amicus brief with the views of the U.S. Gov’t. That CVSG request was sent out in January 2019 and the Solicitor General’s office has not yet responded. I expect that at this point, a draft brief has been completed and there is now some debate between various elements of the administration. I would have expected the brief to be filed by now (7 months later), but now expect it in by about October 10.
HP’s question presented in the case is as follows:
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.
As I mentioned previously, the petition creates a false dichotomy. As we know from claim construction, not all questions-of-fact are given to a jury to decide. And, the Federal Circuit did not hold that eligibility is “a question of fact for the jury.” Despite the intentional misdirection by HP’s Counsel Mark Perry (Gibson Dunn) and David Salmons (Morgan Lewis), the case is interesting and important and I look for the court to take the case.