Summary Judgment, Eligibility, and Appeals

by Dennis Crouch

Ericsson Inc. v. TCL Communication Tech. (Fed. Cir. 2020)

The jury sided with Ericsson — holding that TCL willfully infringed the two asserted claims of Ericsson’s US7149510 and awarded $75 million in compensatory damages. Judge Payne then added an additional $25 million enhanced damages for the adjudged willfulness.

On appeal, a divided Federal Circuit has reversed judgment — holding that the asserted claims are actually invalid as a matter of law as being directed toward ineligible subject matter under Section 101.  Majority Opinion by Chief Judge Prost and joined by Judge Chen. Dissenting Opinion by Judge Newman.

The bulk of the case focuses on waiver of TCL’s right to appeal – with the majority finding no waiver.

During the litigation, TCL moved for summary judgment of ineligibility.  The district court denied that motion after finding that the patent was not directed toward an abstract idea. The case continued then continued to trial and judgment as noted above.

After being denied summary judgment, a moving party typically needs to take a couple of steps in order to preserve the argument for appeal.  Preservation is necessary because the summary judgment motion is seen as effectively moot once trial starts, and so the party needs to make a post-trial renewed motion for Judgment as a Matter of Law (JMOL) under Fed. R. Civ. Pro. R.50(b) (or similar post-trial motion) in order to preserve the issue for appeal.  And, under the rules, a R. 50(a) JMOL motion (made during trial) is a prerequisite to the post-trial R.50(b) renewed JMOL motion. An appeal can then follow if the judge denies the R.50(b) motion.  Here, TCL did not file a JMOL motion or any other post-trial motion on eligibility, but instead simply appealed the Summary Judgment denial — typically a non-starter on appeal.

The waiver rule is different when Summary Judgment is granted.  A grant of summary judgment finishes litigation on the issues decided, and those issues are fully preserved for appeal.

Coming back to this case: Many denials of summary judgment are based upon the existence disputed issues of material fact.  And, even when a defendant’s SJ motion is denied, the defendant may still win the issue at trial.  Here, however, when the district court denied the ineligibility SJ motion there was nothing left for the jury to decide.  Using that logic, the majority held that when the court denied TCL’s ineligibility SJ motion, it effectively effectively granted SJ of eligibility.  Critical to this determination is the appellate panel’s finding that “no party has raised a genuine fact issue that requires resolution.”  With no facts to decide, the question became a pure issue of law: either it is eligibile or it is ineligible. “As a result, the district court effectively entered judgment of eligibility to Ericsson.”  And, as I wrote above, a grant of summary judgment is appealable.

Writing in dissent, Judge Newman argues that the majority’s conclusion that pre-trial denial of SJ on eligibility is the same as a final decision going the other way “is not the general rule, and it is not the rule of the Fifth Circuit, whose procedural law controls this trial and appeal. . . . The majority announces new law and disrupts precedent.”

Judge Newman explained that TCL simply failed to pursue its Section 101 claim after Summary Judgment was denied.

TCL did not pursue any Section 101 aspect at the trial or in any post-trial proceeding. . . . TCL took no action to preserve the Section 101 issue, and Section 101 was not raised for decision and not mentioned in the district court’s final judgment.

There is no trial record and no evidence on the question of whether the claimed invention is an abstract idea and devoid of inventive content. The panel majority departs from the Federal Rules and from precedent.

Newman, J. in Dissent.

The majority also went on to say that its “authority is total” in deciding whether to hear an appeal because there is “no general rule.” “We have the discretion to hear issues that have been waived.”  (The first quote is not actually from the court but something I read in the news).  The court here oddly includes the following statements:

[T]here is “no general rule” for when we exercise our discretion to reach waived issues. . . . Our general rule against reaching waived issues is
based on sound policy. . . .

Majority opinion (concluding that if appeal was waived, the court would exercise its discretion to hear the appeal).

= = = =

On the merits of the invention, the majority and dissent also disagree. As you can read below, the claims are directed to a system for software-access-control and the majority found it directed to the “abstract idea of controlling access to, or limiting permission to, resources.”  The district court instead found that the claims were directed to an “improved technological solution to mobile phone security software.”

1. A system for controlling access to a platform, the system comprising:

a platform having a software services component and an interface component, the interface component having at least one interface for providing access to the software services component for enabling application domain software to be installed, loaded, and run in the platform;

an access controller for controlling access to the software services component by a requesting application domain software via the at least one interface, the access controller comprising:

an interception module for receiving a request from the requesting application domain software to access the software services component;

and a decision entity for determining if the request should be granted wherein the decision entity is a security access manager, the security access manager holding access and permission policies; and

wherein the requesting application domain software is granted access to the software services component via the at least one interface if the request is granted.

5. The system according to claim 1, wherein:

the security access manager has a record of requesting application domain software;

and the security access manager determines if the request should be granted based on an identification stored in the record.


43 thoughts on “Summary Judgment, Eligibility, and Appeals

  1. 9

    With opinions like this you may as well just throw the entire patent system out.

    The only solution is wipe the CAFC. Dissolve it and then reform it and wipe out their precedent since like 2010 to rid us of the SV appointed judges. Do that and some legislation with SCOTUS to fix eBay, Alice, KSR, and Oil States, and we would have a functioning patent system again.

      1. 9.1.1

        We’ve been over this, Night Writer. Not sure why in the world you would be holding onto this view.


          I think this is far more possible than you think it is. I think if the R’s took both houses and Trump was re-elected then it has a shot.

          But not if people like you keep bad mouthing it.

          You know this is a way to wipe out what Obama did in stacking the court. A lot of people are getting that people like Taranto were selected by SV and appointed by Obama.


            I am not bad mouthing it, Night Writer.

            As I said, we’ve been over this. Just because someone shoots down one of your ideas, does not mean that such is ‘bad mouthing’ it.

            As to the wiping out of bad judges, I happen to agree that THAT needs to be done.

    1. 9.2

      The only solution is…

      Need to include having Congress apply their Constitutional power to remove the Supreme Court from their non-original jurisdiction of hearing patent cases.

      If you don’t include that, then ALL that you will get is a fresh group of simians in a cage, with the same set of bananas hanging down from a central point above a step ladder and the Supreme Court fire-hose-training any new judges daring to reach up to the bananas.

      1. 9.2.1

        I think you overestimate the SCOTUS.

        If Congress wacked them with Alice and the others reversal, then I think they would be contrite.

        I think there is a case for shaming the justices for citing Lemley’s paper too that could have far reaching consequences for the justices.


          Meh, I wish that you were correct, but the Act of 1952 (and the history of subsequent meddling) shows that you are not.


              The more things change, the more things stay the same.

              Those who do not learn from history are bound to repeat it.

              Lest you forget, the Act of 1952 cam about because the Supreme Court had gotten SO out of hand that it even labeled itself with the adage of “The only valid patent is one that has not yet appeared before us.”


                anon, things have changed.

                The SCOTUS is under more pressure now to stop making up laws than they have ever been since probably the early 1800’s.

                A sharp smack on the nose and the SCOTUS will go away from making laws about patents for at least 20 years.

                1. I just don’t see it.

                  Look at the individual members of the Court.

                  Look at the Elitism factor there.

                  Who exactly do you think that the Court feels could put them in their place?

                  A: no one.

                  Even if Congress could get their act together and pass anything smacking of a rap on the nose, the Court simply has far too much hubris to sway them from their imposing the policies that they will continue to try to impose.

                  Study history.
                  Study the makeup of the Court.

                  A rap on the nose is just not going to work.

  2. 8

    The result was predictable based on the composition of the panel. But it’s still the case that when Prost and Newman disagree, Prost is always wrong.

      1. 8.1.1

        Have now read the decision. It’s even worse than Dennis makes it out to be, the majority get it wrong on every front.


          What’s more, this panel decision (of TWO judges, with a strong dissent) is marked precedential.

          ALL that this does is highlight the Gordian Knot status of the Common Law re-written law of 35 U.S.C. 101.

  3. 7

    This could also raise significant procedural hurdles for a defendant presenting Step 2 evidence to the jury. Consider this scenario:
    –District judge denies MSJ, finding the claims of the Asserted Patent are directed to an abstract idea (step 1) but there is a fact issue as to whether using a Clockwise Widget was well-known/conventional (step 2).
    –The Asserted Patent cites the prior art ‘123 Patent. The ‘123 Patent, in its “Background” section, says “it is well-known in the art to use a Clockwise Widget.”
    –At trial, defendant seeks to offer this statement from the ‘123 Patent into evidence.

    Is the statement hearsay? Does an exception apply?
    What if an equivalent statement were in a prior art non-patent publication cited by the Asserted Patent? Say, a page from a competitor’s website?

    In the 102 context, the *fact* of disclosure is what matters, not the *truth* of the disclosure. But this is different (and judges are usually reluctant to take judicial notice of factual assertions in a file history).

    At the Rule 56 stage, judges routinely consider such evidence without objection. At trial, plaintiff would likely fight it tooth and nail.

    1. 7.1

      Thank you brother Anon.

      It may well be good to note that errant statements in a patent application (the proverbial patent profanity that you indicate here of an applicant admitting that something is well-known in a background section is ONLY prior art against THAT applicant (if the statement is otherwise not correct).

      This is regards to the *fact*/*truth* aspect that you mention (which is not limited to 102, by the way — which is one reason why THIS type of patent profanity has typically eviscerated ANY inclusion/discussion of prior filed patents and patent publications in a background section.

    2. 7.2

      Wouldn’t it be enough that the ‘123 patent has this assertion? It doesn’t matter if it is factual if the ‘123 patent is prior art, then we have a statement that at least a Clockwise Widget can be used and assuming it is enabled, then it seems like this statement is enough and whether it is true or not that it is well-known doesn’t matter. We know it was known because ‘123 discusses using the Clockwise Widget.

      –The Asserted Patent cites the prior art ‘123 Patent. The ‘123 Patent, in its “Background” section, says “it is well-known in the art to use a Clockwise Widget.”

      1. 7.2.1

        While your rationale would apply in the 102/103 context to show that limitation XYZ had been disclosed somewhere, the Step 2 analysis for 101 requires more–was XYZ routine and conventional?

        As the Federal Circuit said in Berkheimer, “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

        The question, of course, is how many “pieces of prior art” are sufficient to show that XYZ was conventional? Five? Fifty?

        The answer, your cynical colleagues will note, is however many a particular judge or panel needs to justify its finding that the limitation was conventional.

        BUT a statement in a prior art reference expressly saying “XYZ is conventional” is more than a mere “disclosure in a piece of prior art.” It’s an express statement that XYZ was well-known and routine.

        The problem is, when used at trial, it’s also an out-of-court statement offered to prove the truth of the matter asserted in the statement.

        A wise judge may well admit the statement under the recently-expanded residual exception, but the broader point stands: Summary judgment evidence and trial evidence can be two very different propositions.

    3. 7.3

      In the 102 context, the *fact* of disclosure is what matters, not the *truth* of the disclosure.

      A rarely relevant distinction though. A patent specification that refers to the prior art is likely doing it in order to trigger the supplemental rule to avoid having to provide an enabling teaching of the clockwise widget. In other words, either it is true that the art conventionally was enabled to generate a clockwise widget or not – if yes, then 101 violation, if no then 112(a) violation. I suppose there is a rare specification that points the reader to the prior art and then independently enables the teaching the prior art says is conventional, but that is unlikely.

      1. 7.3.1


        Sorry, but I cannot give any weight to your suppositions of what practitioners do and why they do it. Heck, you have not even shown a grasp of your own job as an examiner.

  4. 6

    It surprises no one when any particular CAFC panel declares the law to be whatever necessary to reach its desired result.

    1. 6.1

      Regrettably so. To badly misuse Woody Allen’s line, the case law on §101 is a travesty of a mockery of a sham of a mockery of a travesty of two mockeries of a sham by this point.

  5. 5

    As I read this decision, I felt as if Judges Chen and Prost could have shortened it up a bit and simply said “We are uncomfortable with the result below and to avoid any possible further discomfort at the district court level, we are going to bail these (really bad) defense lawyers out–because who knows what they will screw up if we just send it back– and invalidate under 101.” Similarly, Judge Newman could have shortened it up by simply saying “Majority you are making stuff up and I am going to go on record dissenting so that this flawed decision has a a shot at en banc or at least is questioned in all future cases as being flawed.”

  6. 4

    Any claim can be invalidated under Alice.

    (1) make-up some abstraction the claim is directed to.

    (2) proclaim that there is nothing more to the claim on an element by element basis. If there is a new novel element that has never been seen before in the history of mankind, then put that element as being directed to the abstract.

    (3) Proclaim the claim is invalid.

    This is not hyperbole. I wonder if the judges realize that by acting in this fashion that they are shaking the foundations of our society? Do they realize that they are behaving like Trump who seems to want to test our Constitution? Do they realize that they are just part of the zeitgeist where our government has become lawless? It is a very serious issue.

    Very few people think of the courts as a place to go to get justice. Alice is just one tiny piece of this but it contributes.

    Shame on you Chen and Prost. Shame on you.

    1. 4.1

      Chen and Prost are just one tiny example of how we are no longer a nation of laws. Watch out. The fall is a deep dark cavern where democracy no longer exists. And you Chen and Prost have contributed to that. I would go so far as to say that you have violated your oath to uphold the Constitution of the USA.

      People like Chen and Prost are like Trump where they want to cease control of our country through power. You are supposed to be upholding the Constitution and applying laws. Not doing whatever feel like doing and then fabricating nonsense.

      Not one patent attorney I know has any respect for the CAFC, which is in sharp contrast to 20 years ago when generally the people on the CAFC were respected and seen as trying to apply the laws and do the best they could to create a coherent set of precedents to make patent law efficient and predictable.

    2. 4.2

      Any claim can be invalidated under Alice.

      Don’t you love this from page 8 of the decision:

      And, as discussed in Section III below, the resolution of the patent eligibility question in this case is straightforward.

      Nope, there is nothing confused, conflated, or self-contradictory about the entire jumbled Gordian Knot of 101 jurisprudence per Judge Prost.

  7. 3

    The key here is that the district court rejected the Section 101 challenge based on Step One of Alice, whether the claims were directed to an abstract idea. This is a LEGAL (and not factual) determination, and once the district judge did that, it was game over for the eligibility challenge, as a matter of law. There was nothing left for the defendant to argue at trial, no evidence to present, and nothing more to do to preserve the issue from an appellate standpoint. This is no different than when a district court rejects a party’s claim construction pre-trial and proceeds to trial; there’s obviously no need for the party to present evidence about the failed claim construction at trial, as it was a legal issue that was decisively resolved prior to trial. Just like Step One of Alice.

    The dissent focuses on the form-over-substance observation that Judge Payne’s Section 101 ruling came from a denial of summary judgment. But the procedural posture doesn’t matter, what matters is that the district court made a definitive legal ruling that the threshold Step One legal requirement was not satisfied. It’s no different than when a court makes a definitive claim construction ruling in an order denying summary judgment, the ruling definitively resolves a legal issue.

    Now, if the district court had found that Step One was satisfied but rejected the challenge on Step Two because there were issues of fact on whether the patents recited more than routine, conventional, or well-understood techniques, it would have been a very different result. Because Step Two raises factual issue and isn’t a pure question of law, the defendant would have been obliged to present evidence about that issue at trial and raise the appropriate motions both pre- and post-verdict in order to avoid waiver and preserve Section 101 for appeal. So in a way, Judge Payne did the defendant a solid for appeal by rejecting the Section 101 challenge based on a purely legal ground.

    1. 3.2


      I have to disagree on a number of nuanced points.

      I do “get” the majority’s view (which you clearly ascribe to) that the pre-trial summary judgement was effectively a concluding judgement that all alone preserves an issue for appeal not only past the pre-trial stage, but without more, past the trial stage as well.

      But the dissent at the CAFC level does not constrain itself to any sense of “form over function” as you would characterize it, nor does the opening up of HOW the pre-trail decision was made (Step 1 versus full bore evaluation) work in favor of how the CAFC stepped in and applied the ‘Step 2’ analysis — in the first instance AT the appeal level, which at this inappropriate level DOES expand the “pure law” question into its factual underpinnings.

      There certainly was a ‘rush to judgment’ here (and like other threads, a driver of Ends preordained and damm any appropriate Means) is a sign that things are amiss.

      If anything, the majority should have remanded after disagreeing on the ‘pure law’ step 1.

      Note as well that the dissent takes apart that aspect.

      1. 3.2.1

        You’re right, the dissent has a point on that point, i.e., why not just remand to the district court after deciding the “Step One” legal issue, to decide “Step Two”? Although factual issues are a possibility in the Step Two analysis, the majority of cases don’t actually present them, and here it depends on the evidence in the record on Step Two (which I candidly don’t know well enough to weigh in on). But Newman was clearly wrong on the procedural/appellate preservation issue. Once Judge Payne found that the challenge failed on Step One, there was nothing left of the Section 101 issue to present to a jury. There was no need for the defendants to bring futile Rule 50 motions to preserve an appeal challenge to Payne’s Step One analysis.


          But Newman was clearly wrong on the procedural/appellate preservation issue

          I am not so sure on your emphasis. As I said, I do “get” what the majority is saying (and you apparently agree with the majority).

          Bu that is NOT to say that what Newman is saying is simply wrong. The difference is far more nuanced than that, and DOES fold in the fact that what the majority DID do is itself simply wrong from a legal standpoint. The majority overplayed their position in order to reach a desired Ends.

          The Means to that End IS critical.

    2. 3.3

      I gather from Dennis that the “form over substance” issue here [as opposed to the 101 merits issue thereby allowed here] was the failure ‘ make a post-trial renewed motion for Judgment as a Matter of Law (JMOL) under Fed. R. Civ. Pro. R.50(b) (or similar post-trial motion).. and, a R. 50(a) JMOL motion during trial” as a prerequisite to the former? That should not be occurring much again if attention is being paid to this case.

      1. 3.3.1

        That should not be occurring much again if attention is being paid to this case.

        As with any omission from the established rules, such should be a rare occurrence anyway.

        But it does beg the question: is the form of Rules a matter lacking substance?

        Those, like Prof. Crouch, who teach civil procedure may take issue with the thrust that such form lacks any substance.

  8. 2

    . . . and yet another ends-justifies-the-means decision by the majority.

    Some of the judges move heaven and earth to get their hands on claims they don’t believe “deserve” to stand.

    Laws, rules, waiver, estoppel, stare decisis?

    We’re above all that.

    Far above.

  9. 1

    Family members at the EPO are grand-parent 1573518, parent 3046027 and child 3627321. Third time lucky seems not to apply here. The claims of the child are seen by the EPO Examiners (contrary to the DCt) as not amounting to an inventive solution to a technical problem, just like those of the parent and grand-parent.

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