Gov’t Suggests that neither Berkheimer nor Hikma are ready for Supreme Court

by Dennis Crouch

HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer (Supreme Court 2019)

The Supreme Court has previously identified patent eligibility as a question of law.  However, in Berkheimer, the Federal Circuit recognized that the ultimate legal conclusion may be based upon factual conclusions.  For example, the level of skill in the art (or state-of-the-art) is a classic factual question that may be relevant to the question of inventive contribution (Alice step 2).

The fact-law divide is important for a number of issues. For example:

  • Motion to dismiss or Summary Judgment: at the pretrial stage, it is appropriate for the court to determine questions of law but not to resolve disputed issues of material fact.
  • Evidentiary standards: factual conclusions generally demand a higher standard of evidence and particular burden of proof.
  • Who decides: factual determinations are often given to a jury to decide rather than a judge and “no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.” 7th Amendment.
  • Statement of Facts: If the judge is deciding questions of fact and law, the judge must “find the facts specially and state its conclusions of law separately.” FRCP 52(a).
  • Appellate burden: Factual conclusions are generally given deference on appeal while questions of law are reviewed de novo.

Following the Berkheimer decision, HP petitioned the Supreme Court for certiorari on the following question:

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.

Following briefing, including 7 briefs amici, the Supreme Court then requested that the Solicitor General provide the views of the U.S. Gov’t on the question.  That CVSG brief has now been filed.

SG Brief Berkheimer

The SG also filed a parallel brief in Hikma on the question of “Whether methods of using drugs to treat medical conditions are patent-eligible processes under Section 101.”

SG Brief Hikma

Both briefs open with the following line: “In the view of the United States, the petition for a writ of certiorari should be denied.” Both briefs go on to explain the high level of uncertainty in the law of eligibility:

[A]lthough the Court has construed Section 101 and its precursors for well over a century, its recent decisions have introduced substantial uncertainty regarding the proper Section 101 inquiry.

[The] new framework has generated substantial uncertainty in the lower courts concerning the scope of the exceptions and the proper methodology for determining whether a particular patent implicates them. In Hikma, for example, the majority and dissenting opinions in the Federal Circuit each pointed to different aspects of the language and logic of this Court’s decision in Mayo in reaching diametrically opposite conclusions regarding the patenteligibility of a concrete method of medical treatment.

SG Brief Berkheimer.  According to the Government, the Berkheimer case puts the cart before the horse. Berkheimer focuses in on procedural questions when the substance of the law remains uncertain. Instead of taking this case, the SG suggests first granting review on a case to clarify substantive standards.

The question presented in HP’s petition focuses on whether the Section 101 patent-eligibility inquiry calls for a legal determination by courts, a factual determination by juries, or both. That question would be difficult to answer in any cogent manner while uncertainty about the substance of the Section 101 inquiry persists. At a minimum, the answer to the question HP’s petition poses may be significantly affected by additional guidance this Court provides about the proper analysis for ascertaining whether Section 101 encompasses a particular patent claim. Granting review in this case to address that procedural question would therefore be premature. The Court instead should grant review in an appropriate case to clarify those substantive standards, and it should defer resolution of ancillary issues such as the judge-jury question raised in HP’s petition.



21 thoughts on “Gov’t Suggests that neither Berkheimer nor Hikma are ready for Supreme Court

  1. 9

    That the Solicitor seems to have been convinced to attack as wrongly decided all of the Sup. Ct. decisions over many years on unpatentable subject matter [long before Mayo] not excluded by literal 101 is surprising and significant, if a long shot? But less daring by being combined with a request for the Court to not even take this case [as having been correctly decided as as not unpatentable subject matter even under those decisions]. [Or, worried by the old adage that bad facts can make for bad law?]

    1. 9.1

      I cannot tell what point it is that you are trying to make Paul.

      1. 9.1.1

        I take the comment to be making these 2 points.

        1. The SG has decided to attack Bilski, Mayo and Alice as wrongly decided. That seems like a longshot.

        2. It’s odd that the SG makes this argument in 2 briefs that urge the court not to grant cert. The argument is essentially “the last 9 years of your 101 cases are wrong, so don’t grant cert in either of these 2 cases.”
        My response is that the briefs here are essentially backdoor/under-the-table/[insert preferred metaphor here] amicus briefs in support of the cert petition in Athena. The SG wants the court to grant cert in Athena, where it will then press this argument that the last 9 years of the Supreme Court’s 101 cases are wrong. It’s a bold argument. I wonder how much influence Iancu had on this brief.


          Interesting interpretation and follow-up, dcl.

          However, I think that a ton of the “spin” can be understood directly from the spin of the “questions presented.”

          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
          Whether methods of using drugs to treat medical conditions are patent-eligible processes under Section 101.

          are BOTH twisted and preposterously spun questions.

          To 2), on the surface, there would appear to be NO possible reason why methods (of anything) would not logically fall into the DEFINED process category of 35 USC 101 — based solely on the definition provided by Congress in 35 USC 100.

          To 1), this is clearly a strawman question, to which BOTH provided options are not only false, the second one is painfully conflated with “state of the art” tainting a NON-state-of-the-art legal condition.

          This type of lead-in — no matter what else the briefs may contain — is NO “friend of the Court.”

          If I had my way, such chicanery would be sanctionable.

          Now, I do understand that the briefs do try to paint a different picture than what merely is present in the questions presented. However, that different picture not only STILL could have been presented without the distortions of the “questions presented,” but most likely would have been BETTER drawn following questions presented that did not so signal a twisted view.

          In other words, not only is the lead-in spin deeply unfortunate, such is unnecessary.

    2. 9.2

      An unusually blunt comment in PatentDocs today along the same line: “It should not be surprising, given the brashness of the Trump administration, that the executive branch would take two clear swipes at the judiciary: “You screwed up the law” and “you are not qualified to fix it.” Despite the merits to both of these points, being a fly on the wall during the Court’s conference on this case would likely prove interesting. “

  2. 8

    2 most interesting things in the SG’s briefs are: (1) the argument that Bilski and Mayo depart from earlier precedent by switching from interpreting the statute to making up exceptions, and that this switch has led to “confusion,” and (2) the implicit plug for granting cert in Athena. I think MM and “Judge Rich’s ghost” touch on these points already in comments.

    (1) isn’t what the Supreme Court thought it was doing in Bilski. Bilski says this: “Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas.” Maybe Bilski was wrong–either on the law or in characterizing what it was doing–but the SG’s argument is one I think I haven’t seen before.

    1. 8.1


      The scrivining of the Court itself is THE mess.

    2. 8.2

      but the SG’s argument is one I think I haven’t seen before.

      Then you have not been paying attention, dcl.

      As much as I detest the way that the briefs open (see above), the Berkheimer brief largely refers to the Hikma brief, and that brief appears to crib from MANY of the positions that I personally have written about on these very pages.

      Of course, I am not the only one that has sounded out the impropriety of the Court’s actions in regards to its inserting itself in rewriting 101 by way of Common Law law writing, but you should not be surprised or unaware that the SG has “borrowed” arguments that ring true.

      However, here, the “friend” of the Court whispering is surely likely to be ignored BY the Court. One problem is that the brief provides no path of a “respectful” exit, and the Court would have to point blank own its ill-taken steps.

      But to that predicament, I have also provided an answer: the Kavanaugh Scissors.

      There are two shears to that implement that can beautifully cut through the Gordian Knot of the mess of what the Court has done with 35 USC 101. The beauty though, would be that the Court itself could wield that implement, thereby “saving face.”

      Alternatively, (and perhaps better in the long run), another idea that I have advanced could be entertained: Congress could exercise its Constitutional authority of jurisdiction stripping of the non-original jurisdiction of patent matters from the Supreme Court (and couple that with a reformulated new Article III body to both maintain Marbury, and to avoid the scourge of the Supreme Court’s fire-hose of simians in a cage pollution of the current CAFC).

  3. 7

    In fact, it isn’t very difficult to predict whether a given claim has severe 101 issues and is likely to be deemed ineligible. At the very least, it’s no more or less “predictable” than an obvious analyis.

    The problem that commenters like Greg DeLassus have is not “uncertainty”. It’s the opposite. Their problem is the absolute certainty that some of their favorite claims are ineligible (e.g., claims to methods of collecting data using the prior art and making a correlation based on the data; or claims to the use of prior art detection methods for detecting newly discovered naturally occurring phenomenon).

    And guys like Greg will never stop gaslighting the community when it comes to this issue. Sure, their behavior is transparent and reeks of desperation. But they are desperate. Why? Because they’re not that smart.

    Also, this is a real hoot from the SG:

    [The] new framework has generated substantial uncertainty in the lower courts concerning the scope of the exceptions and the proper methodology for determining whether a particular patent implicates them.

    Again, there’s not any more “uncertainty” regarding 101 than around any other aspect of patent law. Legal concepts evolve over time and patent law has always been a rapidly evolving area. Suffice it to say that more “uncertainty” has been introduced by misleading write-ups and “sky-is-falling” titles in patent blogs than has been generated by the Supreme Court. And we all know what happens here when basic non-rebuttable concepts about subject matter eligibility are presented to guys like Greg, Bildo, ProSay, etc.

    In Hikma, for example, the majority and dissenting opinions in the Federal Circuit each pointed to different aspects of the language and logic of this Court’s decision in Mayo in reaching diametrically opposite conclusions regarding the patent eligibility of a concrete method of medical treatment.

    News flash: that’s true of most dissenting opinions in appellate cases where there is some disagreement about how to interpret a Supreme Court case and/or apply that SC case to set of distinguishable facts. There is nothing unique or alarming about this.

    1. 7.1


      Are you going to continue to pretend that the Common Law law writing has not written itself into a Gordian Knot of conflicting case law?

      Every single branch of the government has made this admission, and yet you would pretend that no conflicts exist.

      1. 7.1.1

        By the by, this is one of the reasons why “the Ends justify the Means” is d00med to fa1lure in the realm of the Rule of Law.

        Sir Thomas More would gladly point out to you that in your tearing down all law to get to the “dev1l” (in your mind), that when all law is flattened, and you have caught up with the “dev1l,” and the “dev1l” turns around and stares you in the face, you have no protection of the Rule of Law.

  4. 6

    PatentDocs notes at the end of its report that: “The Solicitor General concludes the brief by recommending that the petition for a writ of certiorari in Vanda be denied, and proposing as an alternative that the petition be held pending the Court’s decision in Athena, in the event the Court grants the petition for certiorari in that case.”

  5. 5

    What about the most important point in the two SG briefs–that the Court should review Athena Diagnostics??

  6. 4

    Doesn’t it seem rather unusual for the Solicitor to argue “the law is in confusion” as a reason for NOT taking cert?

    1. 4.1

      Not necessarily. It is not uncommon for the SCotUS to take the view “let’s wait and see how the circuit courts sort this out.”

      The CAFC appears to be feeling its way toward an accommodation of Mayo/Alice that does the least possible damage to the overall well functioning of the patent system. It is not crazy for the SG to urge the SCotUS to give the CAFC the time and space necessary to sort out that accommodation. If the SCotUS does not like what it sees at that point, there will always be another opportunity* to step in (and mess things up even further, as the SCotUS is wont to do).

      * Unless—that is—the Congress does the smart thing, and amends the Judiciary Act to remove the CAFC from the SCotUS’s ceriorari and mandamus jurisdictions. This does not seem likely, however.

      1. 4.1.1

        Anyone who has been following along can quite clearly see (and by anyone, I include the on-the-record remakes of ALL three branches of the government, including CAFC judges, the director of the USPTO, and various Congressmen) that ALL that we have by way of patent eligibility Common Law law writing is an ever growing ball of a tangled Gordian Knot.

        The view of “well, let’s see if this sorts itself out” is NOT an honest view.

      2. 4.1.2

        Perhaps in some cases Greg, but here the confusion is openly admitted and expressed by and between members of the same circuit court as established confusion over what the Sup. Ct. means and wants in specific Sup. Ct. opinions.


          Sure, agreed. Clearly the CAFC does not feel that way. It is not, however, all that especially unusual or confusing for the SG to disagree with the CAFC about this.

  7. 3

    The two shears of the Kavanaugh Scissors are present here.

    Whether or not the Court will take a leadership position in cutting through its OWN Gordian Knot, however, remains to be seen.

  8. 2

    On the whole, we are always better off when the SCotUS does not take cert. on a patent case.

  9. 1

    “[R]ecent decisions have introduced substantial uncertainty…”

    Understatement of the decade.

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