Appealing Denial of Summary Judgment (without a subsequent JMOL motion)

by Dennis Crouch

Ericsson Inc., et al. v. TCL Communication Technology Holdings Limited, et al. (Supreme Court 2021)

A jury sided with Ericsson with a $75 million verdict for the patentee. (See the verdict image above).  On appeal, the Federal Circuit flipped the verdict — holding that the asserted patent was ineligible under Section 101.  In a new SCT petition, Ericsson challenges the decision on procedural grounds — arguing that TCL did not properly preserve the eligibility issue for appeal.  In particular, Ericsson argues for waiver because the defendant did not raise the issue in a post-verdict R.50(b) motion for Judgment as a Matter of Law.

During the litigation, TCL had argued that Ericsson’s claims were ineligible under Section 101.  Before trial the district court denied TCL’s motion for summary judgment.  TCL did not raise the issue again at trial or in a motion for JMOL under either R.50(a) or R.50(b).

Normally, denial of summary judgment does not preserve an issue for appeal. Rather, the moving party must follow up with a pre-verdict motion for JMOL and then a post-verdict renewed-JMOL motion.  Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006); Ortiz v. Jordan, 562 U.S. 180 (2011).

Oritz is parallel to TCL’s case but involves a Civil Rights action under Section 1983In Oritz, a the defendants filed a summary judgment motion on qualified immunity grounds, but that motion was denied prior to trial.  The plaintiff then won a jury verdict at trial and the defendant did not re-raise the qualified immunity question in a post-verdict JMOL motion.  On appeal, the Sixth Circuit flipped on the issue of qualified immunity — thus excusing the defendants.  In its decision, the appellate panel noted the usual rule that appellate courts “normally do not review the denial of a summary judgment motion after a trial on the merits.”  However, the appellate court found qualified immunity to be a special situation and went-ahead to review the SJ decision.  The Supreme Court disagreed with the Sixth Circuit — holding that the appellate panel had no power to review the summary judgment denial.

We granted review to decide a threshold question on which the Circuits are split: May a party, as the Sixth Circuit believed, appeal an order denying summary judgment after a full trial on the merits? Our answer is no. The order retains its interlocutory character as simply a step along the route to final judgment.

Ortiz v. Jordan, 562 U.S. 180, 183–84 (2011).

In TCL’s case, the Federal Circuit distinguished Ortiz by identifying a different exception for situation where the “disputed issue concerns a pure question of law.” In its analysis, the Federal Circuit purported to follow Fifth Circuit law — because this issue is procedural and the case stems from Texas.  The appellate panel explained that the Fifth Circuit continues to allow appeals from S.J. denial when the issue being appealed is a pure question of law that would not have been raised at the jury trial.  Note here that the Federal Circuit decision does not distinguish or even cite to the Supreme Court’s most recent statement on-point, Ortiz.

A key element of the majority decision is that – for a question of law – denial of summary judgment of ineligibility fully decides the issue and acts sub silento to effectively grant summary judgment of eligibility. “[T]he district court here did not merely deny summary judgment. Rather … it effectively granted summary judgment in favor of the non-moving party by deciding the issue and leaving nothing left for the jury to decide.” The Federal Circuit majority opinion was written by Chief Judge PROST and joined by Judge CHEN.

Judge NEWMAN wrote in dissent and argued that the majority erred in its approach to summary judgment motions — “The majority announces new law and disrupts precedent.”

All this sets up the new petition for writ of certiorari that asks two questions:

1. Whether, notwithstanding the ordinary rule that a pretrial denial of a motion for summary judgment is not reviewable on appeal, there is an exception for summary judgment decisions that turn solely on “legal issues.”

2. Whether an order denying summary judgment can be reviewed following trial, at the discretion of the court of appeals, notwithstanding a party’s failure to seek judgment as a matter of law on those grounds under Rule 50.

[Ericsson Petition for Writ of Certiorari] [Federal Circuit Decision].

= = = = =

Summary Judgment, Eligibility, and Appeals

= = = = =

U.S. Patent No. 7,149,510, Claim 1:

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.

 

36 thoughts on “Appealing Denial of Summary Judgment (without a subsequent JMOL motion)

  1. 7

    I thought the purpose of the Federal Rules of Civil Procedure was to exam the merits of the case and not to impose procedural hurdles to hamper justice. The renewed JMOL motion after being denied a JMOL to preserve the point on appeal seems to be a pointless procedural hurdle that prevents a proper examination by the appellate court. It will be interesting to see how the Supreme Court comes down on this issue as to whether the Biden administration will have to pack the court to rebalance the partisan political temperament of the Robert’s court.

  2. 6

    As was discussed in the comments when the original decision came out in April 2020, this petition would have a lot more merit if the district court’s denial of summary judgment was based on questions of fact on the Alice Step 2 (inventive step) analysis, as that would have suggested that there was a factual issue for the jury on whether the claimed techniques were routine, conventional, etc., under Step 2, and thus, something the defendant should have raised in a pre-verdict JMOL motion.

    But the district court’s order here rejected the 101 challenge based on Step 1 (abstract idea), which is a legal question that doesn’t go to the jury. Because Step 1 is a threshold legal question, once resolved against the defendant, there was nothing left to present at trial on the 101 challenge. It’s no different from the longstanding rule that a party doesn’t have to raise in JMOL a claim construction issue the district court resolved before trial. That rule is just an extension of the broader rule that litigants don’t need to raise purely legal issues definitively resolved pre-trial by the trial court, and that rule doesn’t care if the determination was made in summary judgment or some other procedural posture.

    1. 6.1

      Does your opinion change if I tell you that the district court concluded that “the claims are not directed to an abstract idea but rather to an improved technological solution to mobile phone security software”? Is there an underlying factual issue as to whether the solution recited by the claims was actually an improvement?

      Bonus question: is there room to challenge the longstanding rule regarding claim construction and JMOL post-Teva?

      1. 6.1.1

        Are you deviating from the statement of law as provided by the court? (Given on the direct issue)

      2. 6.1.2

        I think we’re getting a little off track here. For purposes of JMOL preservation, it’s worth explaining why the “question of fact” and “question of law” dichotomy is helpful, but not dispositive.

        The more relevant question, for purposes of appellate preservation through JMOL, is whether the issue is decided by (1) the judge or (2) the jury. If the question is NOT decided by the jury, you don’t need to preserve the issue through JMOL. Period.

        This is the rule regardless of whether you’re talking about a pure question of law, or question of law whose determinations may involve underlying facts. Personal jurisdiction, claim construction, evidentiary rulings, etc., are all questions decided by the judge that may turn on factual issues, but none of those go to the jury, and for that reason, do not need to be raised through JMOL to preserve them for appeal. And because Alice Step 1 does not go to a jury, you don’t need to preserve that issue through JMOL, regardless of whether you think it may involves factual issues.

        For this same reason, I don’t think Teva will have any impact on whether you have to preserve claim construction issues through JMOL, because regardless of the existence of factual underpinnings, the claim construction issue is not decided by the jury.

        In understanding JMOL preservation, it’s helpful to understand why the JMOL appellate forfeiture rule exists in the first place, which I think the cert petition here completely overlooks. The JMOL forfeiture rules exist largely because of the Reexamination Clause of the Seventh Amendment, which states that “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.” The JMOL motion gets around that rule because, in 1791 English common law (which is what “common law” means in the Reexamination Clause), a party could attack a jury verdict through a nonsuit motion so long as that motion was a “renewal” of a nonsuit motion made before the verdict. That’s why FRCP 50 retains the clunky motion-and-renewal procedure, and requires you to bring the JMOL before the verdict even if (as in most cases) the judge simply sits on the motion until after the verdict.

        But putting aside this historical detour, the forfeiture rule was only ever designed to apply to “a fact tried by a jury,” as stated in the plain text of Seventh Amendment. And that’s why the plain text of FRCP 50 (which governs JMOL motion), only applies to issues that were fully heard “during a jury trial.” Because Alice Step 1 wouldn’t be heard “during a jury trial,” there is absolutely no reason the defendant would have needed to bring a JMOL motion to preserve it for appeal.

        1. 6.1.2.1

          Many thanks for the detailed reply, as I am sure that it took a good bit of time. I suspect that I am largely (or completely) in agreement, and will try to review in more detail when I have time and circle back.

          J

        2. 6.1.2.2

          Lode-R. Everything you say here makes sense to me.

          The one major caveat – and the reason I wrote about Ortiz v. Jordan – is that qualified immunity is also a question of law, and one that the Supreme Court has encouraged courts to resolve early in a lawsuit. That makes it seem quite parallel to the patent eligibility situation.

        3. 6.1.2.3

          Interesting. Thanks.

        4. 6.1.2.4

          “If the question is NOT decided by the jury, you don’t need to preserve the issue through JMOL.”

          As Rule 50 references a party having been “heard on an issue during a jury trial,” I would ab initio think that it applies so long as the issue is heard during a jury trial, irrespective of who ultimately decides the question.

          You are probably correct, but I would be curious to see authority and reasoning for it.

          As Dennis notes, qualified immunity is ultimately decided by a judge, although subsidiary factual issues may be decided by a jury. See, e.g., Johnson v. Breeden, 280 F.3d 1308, 1318 (11th Cir. 2002) (“Qualified immunity is a legal issue to be decided by the court, and the jury interrogatories should not even mention the term (citation omitted)).

          I’m open to the argument that a pretrial motion does not qualify as being heard during trial, but that does raise the question of what is being appealed and when is the deadline to appeal it.

          Moreover, as I outlined a bit in my post below, I still am not convinced that this really is a purely legal issue.

          In Ortiz, the Respondent made the exact argument that “[u]nlike an ‘evidence sufficiency’ claim that necessarily ‘hinge[s] on the facts adduced at trial,’ … a purely legal issue can be resolved ‘with reference only to undisputed facts.'” Ortiz v. Jordan, 562 U.S. 180, 892 (2011) (quoting Brief for Respondents at 16).

          The Court indicated that “[w]e need not address this argument, for the officials’ claims of qualified immunity hardly present ‘purely legal’ issues capable of resolution ‘with reference only to undisputed facts.'” Id.

          Thus, this may go back to the issue of whether you believe that the eligibility analysis is purely legal. As discussed in my post below, I personally am not convinced that step one is a purely legal issue which is not sometimes based on underlying factual issues.

          Irrespective of this, however, it is not clear that the relevant inquiry as to whether it is a “purely legal” issue means only looking at the part of the inquiry that the district court felt was sufficient to dispose of the issue. The eligibility inquiry as a whole definitely can be based on underlying facts, and resolution of the issue by an appellate court may well depend on factual issues. Indeed, in addressing eligibility, I believe that both the majority and dissent found it relevant to quote from trial testimony.

          Many thanks for the insightful comments regarding the genesis of the Rule.

  3. 5

    In my private world: another instance where 101 is pressed into service on a question of abstraction in claims, not abstraction in the invention.

    When a claim is extrinsically abstract, it should mean that PHOSITA couldn’t make or use the invention on the disclosure provided, or that the disclosure would have been a variation, rather than a difference from that already known, or most often- both.

    It happens in real life that sometimes a purported invention is not-enabled and obvious, but not in an easily separable manner for the usual 112/103 factual analyses, and most often in “do it on a computer” situations.

    That’s what Alice could be good for, but not in the context of 101.

    This invention does not turn on human consumption of the specific meaning of information to human affairs-which would render it intrinsically abstract- but it describes something- in functional language- basic to virtually every computing system: information about users, and information about use.

    It should have been eligible, but there should be a concept of obviousness / lack of enablement as a matter of law that would have invalidated it.

    Until we get there, we get this procedural spaghetti. Couldn’t this same question of right to appeal be maintained for denied 12(b)6 motions not considered JMOL’s if not raised at trial or post verdict (and why would they be)?

    1. 5.1

      Your “terrain” is not patent law terrain.

  4. 4

    The petition is very well written, to the point of making me wonder how this is even still an open question in 2021. Nonetheless, I think the Federal Circuit’s decision is persuasive. link to cafc.uscourts.gov

    The Supreme Court’s Ortiz decision says this (my emphasis):

    We granted review, 559 U.S. 1092, 130 S.Ct. 2371, 176 L.Ed.2d 767 (2010), to decide a threshold question on which the Circuits are split: May a party,
    as the Sixth Circuit believed, appeal an order denying summary judgment after a full trial on the merits?[1] Our answer is no. The order retains its interlocutory character as simply a step along the route to final judgment. See Cohen v. Beneficial Industrial Loan Corp., 337 U.S. 541, 546, 69 S.Ct. 1221, 93 L.Ed. 1528 (1949). Once the case proceeds to trial, the full record developed in court supersedes the record existing at the time of the summary-judgment motion. A qualified immunity defense, of course, does not vanish when a district court declines to rule on the plea summarily. The plea remains available to the defending officials at trial; but at that stage, the defense must be evaluated in light of the character and quality of the evidence received in court.
    link to scholar.google.com

    If a district court denies SJ on the ground that there are triable issues of fact, and then the issue on which SJ was sought actually goes to trial, then it makes sense that you can’t appeal the SJ denial. SJ and JMOL are effectively the same question before and after trial: is there only one result a reasonable jury could have reached? JMOL asks that question retrospectively based on an actual trial record; SJ asks that question prospectively based on something a bit more hypothetical. If an issue actually goes to trial, why should the losing party be able to argue “the jury verdict was reasonable based on the trial record, but summary judgment should have been granted because the other side’s summary judgment opposition wasn’t very good”?

    That logic seems not to apply where the issue on which SJ is sought didn’t actually go to trial because the district court’s denial of SJ for the movant was effectively a grant of SJ for the non-movant. If the SJ ruling is a definitive ruling that the patent claims are eligible under 101–as opposed to a ruling that, per Berkheimer, a jury could rule either way so it has to go to trial–then it seems pointless to insist on a JMOL motion. Why should someone have to file a JMOL motion on an issue that didn’t actually go to trial because it was effectively decided at SJ?

    1. 4.1

      Ugh… unclosed italics tag. Sorry about that.

    2. 4.2

      dcl,

      One potential answer to your last question is that if the legal issue involves underlying factual issues, requiring a JMOL motion gives the trial court an opportunity to weigh additional evidence from the trial and make factual findings further supporting its conclusion.

      If the district court is not given an opportunity to make factual findings based on evidence from the trial supporting its conclusion as to a legal issue with underlying factual issues, then the party losing the SJ motion is free to make its arguments directly to the appellate court with the appellate court having to (or getting to, depending on your perspective) weigh the evidence itself without any deference to non-existent district court factual findings regarding that evidence.

      This seems less than ideal for the district court (whose SJ order on a question of law with underlying factual issues would be reviewed using facts developed during trial that were not available when the SJ order was entered), the appellate court (who does not get the benefit of district court factfinding), and the non-appealing party (who presented all of its evidence before the district court only to have it evaluated by an appellate court instead). The only real beneficiary is the appealing party, who can lay the groundwork for appealing the issue by presenting evidence supporting the argument it plans to make in its appeal, but never actually give the district court another chance to weigh in on that evidence.

  5. 3

    Prof. Crouch, “had now power” is the opposite of what you intended, “had no power”

  6. 2

    I.e., the very same legal argument raised [by S.J] before trial must be repeated again after trial, even though certain to be denied again, in order to even appeal it. A frightening attorney technicality pitfall, but a FRCP violation.
    I assume that rather than granting cert the Sup.Ct. could simply remand the case back to the Fed. Cir. to consider Ortiz v. Jordan?

    1. 2.1

      You mean after the CAFC has boffed this?

    2. 2.2

      If there are underlying factual issues that are borne upon by facts developed during trial, doesn’t requiring a JMOL motion give the patent owner a chance to explain how the developed facts further support the legal conclusion, and give the district court an opportunity to weigh those facts and further articulate/support its conclusion? Allowing appeal without a JMOL motion allows the party that loses at SJ to skip providing the district court any further opportunity to buttress its conclusion with supporting facts developed during trial, and instead try to get a fresh look from the appellate court based on the district court’s initial pre-trial take.

      Perhaps this represents a good strategy, but allowing it would seem to provide terrible incentive structure, as trial courts are in a much better position to weigh evidence. It would seem a bit unfair to review a trial court’s SJ order on a question of law with underlying factual issues using facts developed during trial that were not available when the SJ order was entered. It is especially strange if the review involves the appellate court making factual findings that bear on the result based on evidence that the trial court never had a chance to make factual findings based on vis-a-vis that issue.

      1. 2.2.1

        That seems a persuasive argument, but could you further explain which FRCP would prevent the full trial record from being available to both parties on appeal whether or not a JMOL motion was filed? Also, why would “the party that loses [or wins?] at SJ [Want To] skip providing the district court any further opportunity to buttress its conclusion with supporting facts”? [If it had any such facts, in logical anticipation of a JMOL motion on that issue?]

        1. 2.2.1.1

          Paul,

          In this instance, the matter was decided at Alice-Mayo step one as an issue ONLY at law.

          In the story above, there is a link to the prior treatment here at Patently-O (the 43 comments).

          I think that you would find it instructive to review the conversations there.

        2. 2.2.1.2

          Paul,

          The thought is not that any FRCP would prevent the full trial record from being available irrespective of whether a JMOL motion was filed, the thought is more that you are not giving the district court an opportunity to make additional fact findings regarding additional evidence from trial in its evaluation of the legal issue.

          This is potentially a big deal, as if the district court makes factual findings regarding the evidence then the appellate court has to grant these deference and review them for clear error. On the other hand, if the district court is not given an opportunity to make factual findings based on evidence from the trial supporting its conclusion as to a legal issue with underlying factual issues, then the party losing the SJ motion is free to make its arguments directly to the appellate court with the appellate court having to (or getting to, depending on your perspective) weigh the evidence itself without any deference to non-existent district court factual findings regarding that evidence.

          If the party losing at SJ believes that the district court is likely to make factual findings based on trial evidence unfavorable to its argument if presented with the chance to in the form of a motion for JMOL, then the losing party is seemingly incentivized to not give the district court an opportunity to make such factual findings.

          In other words, the party losing at SJ is potentially incentivized to lay the groundwork for appealing the issue by presenting evidence supporting the argument it plans to make in its appeal, but never actually giving the district court another chance to weigh in on that evidence. Again, this could be a great strategy, but it feels like the incentives are all wrong.

          1. 2.2.1.2.1

            Thank you for the follow-up references to the parties proposed findings of facts to the D.C. judge in these cases and the importance of that if they are adopted.

            1. 2.2.1.2.1.1

              But Lode Runner at comment 5 above seems to suggest that in this case there were no such facts which could have been developed during the trial?

          2. 2.2.1.2.2

            With respect, J. Doerre, this argument doesn’t really track. Your premise is that the 101 issue presented underlying factual issues, but in this case, it didn’t. The district court decided the 101 issue under Step 1 of Alice which is a pure question of law. The evidence presented at trial, therefore, wasn’t going to reinforce or undermine the district court’s conclusion that the claims were not directed to an abstract idea under Step 1. The so-called “incentives” you mention don’t really come into play in this situation.

            Now obviously Step 2 can involve factual considerations, and as was discussed, maybe the Federal Circuit should have reversed the erroneous Step 1 determination but then simply remanded for the district court to consider Step 2, in the first instance, based on all of the evidence in the record (which could include trial testimony if relevant). It’s easy to see why that didn’t happen here, as the patent owner’s Step 2 arguments were based on an alleged inventive concept that wasn’t reflected in the claims (and thus those arguments were capable of being rejected as a matter of law on appeal). That issue also isn’t presented in the cert petition.

            1. 2.2.1.2.2.1

              I was basically assuming my premise and asking questions about the general situation.

              That being said, I currently have a hard time seeing how step one of the Mayo / Alice framework is not the same as step two – an issue of law which may be based on underlying factual issues.

              In general, “[t]he Supreme Court and [Fed. Cir.] cases have consistently held that whether a practice is ‘longstanding’ or ‘long prevalent’ is central to the step one inquiry and have never suggested that prior art is irrelevant to that question.” Cardionet, LLC v. Infobionic, Inc., 955 F.3d 1358, 1377 (Fed. Cir. 2020) (Dyk, J., dissenting in part and concurring in the result).

              Here, in its SJ order, the district court concluded that “the claims are not directed to an abstract idea but rather to an improved technological solution to mobile phone security software.” Pet. App. 98a. It certainly seems like the question of whether the recited invention was “an improved technological solution to mobile phone security software” could represent a factual question, and if evidence existed that this was not an improved technological solution, then it seems like this certainly could have been presented.

              Even when urging that “Alice step one presents a legal question that can be answered based on the intrinsic evidence,” the Fed. Cir. has had to make clear that they “do not hold [] that it is impermissible for courts to ‘look[ ] outside the intrinsic evidence’ as part of their Alice step one inquiry, … or that all evidence presented by the parties that doctors have long used the claimed techniques would be irrelevant to the inquiry in this case.” Cardionet, 955 F.3d at 1372-73.

              Overall, I recognize your point, and am not really intending to express a strong opinion, but I do not think that it is off base to suggest that the step one inquiry may sometimes be based on underlying factual issues.

              1. 2.2.1.2.2.1.1

                Would you then parallel — during examination — the necessary APA level of rigor to any examiner “fact finding” into step one?

                Recall how the Berkheimer case (and resulting Memorandum) heightened the examiner duty based directly on the nature of “fact finding” in the Step 2B phase.

                The 2019 Patent Eligibility Guidelines were drafted to make it easy on the examiners to avoid that rigor by providing many off-ramps. The major off-ramp was the segregation between the prongs of Step 2A and Step 2B, and this, in no small part is due to the difference in level of factual analysis.

                1. I raise this as an academic issue. Personally, I have never been excited about the idea of challenging a step one determination based on factual issues. The Fed. Cir. packs a lot of weight into the step one analysis – I am not sure that the S. Ct. intended all of that weight.

                  But answering the question generally, any factual finding could be challenged for a lack of substantial evidence, but this is a highly deferential standard of review, and you will also likely need to demonstrate that it is not harmless error.

                  The Office guidance is extremely deferential and makes having to fight with the Office on eligibility largely unnecessary. If the Office finds it ineligible, it likely has no value anyway.

                2. Interesting views – and worth exploring more, I believe.

                  But let me get this one point out of the way:

                  If the Office finds it ineligible, it likely has no value anyway.

                  I could not disagree with you more. For a while (just before the 2019 Patent Eligibility Guidance came out), EVERY application in our firm was such that the Office was finding the innovation ineligible.

                  Every
                  Single
                  One.

                  Now that disagreement is noted, I am curious (still) why you think that there must be some mixture of fact and law in both steps, and what that would necessarily do — during prosecution (and notably BEFORE the post-prosecution provision of weight takes effect) as to the Examiner bearing their APA level burden.

                  You are aware that one of the reasons for the 2019 Guidance was because examiners were being literally pounded on the Berkheimer-induced higher level of APA level proof that items (as a whole and as ordered combinations) were conventional, right? That this showing of conventionality was materially – and significantly materially – different than what examiners are used to in the providing of prior art for anticipation and obviousness legal reasons (neither of which satisfy the higher burden to show conventionality).

                  You seem to want to brush this aside, but your view basically eviscerates the difference made by Director Iancu in the different off-ramps of the eligibility guidance.

                  I hear your points in the post prosecution stage – but you (the Royal You of the examiner) have to get through the prosecution stage first – you (again the Royal You do NOT get that deference at first blush.

                  The Office guidance is extremely deferential and makes having to fight with the Office on eligibility largely unnecessary

                  Sadly, you are ONLY partly correct here. Director Iancu DID try to make the guidance deferential (and in large part this was a boon to the examiner), but that did NOT bring out the second part of the statement, as there were MANY in the bowels of the Office that fought tooth and nail AGAINST that attempt to make the guidance deferential. I STILL routinely run into examiners who declare that the guidance changed nothing (and not just at the bottom layers at that).

                  Lastly, as to “I am not sure that the S. Ct. intended all of that weight.” – well, I am not sure that ANYONE can honestly ‘tell’ what ANY type of ‘weight’ the Supreme Court intended because they are the prime reason for the current fiasco in eligibility jurisprudence.

                  Did they intend that?

                  (judging by the number of cert petitions that they have denied, it is fair game to propose that they did indeed intent that)

              2. 2.2.1.2.2.1.2

                My comment was largely intended to convey that if you cannot get a claim easily allowed at the Office under the Office guidance, then the chances of it surviving an ineligibility challenge in a court proceeding are probably low, although I’ll admit this is probably not categorically true.

                Also keep in mind that the substantial evidence standard is a standard of review under the APA, not a standard of proof. This is a good thing, as it is actually a very deferential standard of review. “[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.” In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). Further, the Board has suggested that it reviews examiner findings and conclusions de novo, indicating in a precedential decision that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” Ex parte Frye, appeal no. 2009-006013, slip op. at 10 (PTAB Feb. 26, 2010) (precedential).

                1. Thanks – but your “largely” just does not track.

                  Note as well that claims that do get through easily (and for example, a pre-2019 guidance one — Cleveland Clinic, exactly modeled on a USPTO example) still gets sh0t down by the CAFC (fire-hose trained by the Supreme Court).

                  I “get” what you want to be — it just is not so.

                  For that larger point – nice adds otherwise.

            2. 2.2.1.2.2.2

              Lode, has there been a case that fails Alice step 1 but is saved in step 2? Anybody?

              1. 2.2.1.2.2.2.1

                Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019); Aatrix Software v. Green Shades Software, 882 F. 3d 1121 (Fed. Cir. 2018); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016); Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Rapid Litigation Management Ltd. v. Cellzdirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).

                I’m sure I missed one or two.

  7. 1

    Does the CAFC never tire of issuing ends-justifies-the-means 101 / eligbility decisions?

    Will. They. Ever?

    1. 1.1

      Nope. The ‘results oriented’ CAFC. In the old days, Markman used to swallow the issue by turning everything into a legal question of claim construction, now Alice dispenses with the backflips. Right. On. The. Pleadings.

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