by Dennis Crouch
The well-worn advice to trial lawyers, famously captured by Carl Sandburg, has long been: “If the law is against you, pound on the facts. If the facts are against you, pound on the law. If both are against you, pound on the table.”
This traditional dichotomy between law and fact reflects a fundamental principle of American jurisprudence – that certain questions are reserved for judges (law) while others are reserved for juries (fact). And, even in cases where the judge serves both roles, the law provides for a strict separation of role. See FRCP 52(a). But patent law doctrine often defies this clean separation. Take patent eligibility as an example: while courts characterize the atextual eligibility doctrine as ultimately a question of law, the analysis may require underlying factual determinations about what was conventional in the relevant field at the time of invention. And, even the “legal” aspects of eligibility analysis – like whether claims are “directed to” an abstract idea – require their own form of proof and evidence. The difference is that because courts have labeled these as questions of law, they bypass traditional evidentiary standards. This creates a peculiar framework where some elements of proof are subject to strict evidentiary requirements while closely related elements are left to judicial reasoning without similar constraints. The problem has been further complicated in the eligibility area because the Federal Circuit has not generally required district courts to carefully separate their analysis between law and fact — even at the pretrial stage where judicial factual conclusions are usually avoided. These issues are raised to some extent in BBiTV’s newly filed petition for certiorari, which challenges how courts handle disputed factual issues when deciding patent eligibility on summary judgment.
For me, BBiTV’s argument raises deeper questions about how courts have arrived at this procedural framework for handling patent eligibility determinations. In my view, several historical developments in patent law have contributed to the current state of affairs, where judges increasingly make what appear to be factual determinations under the guise of eligibility legal analysis. These developments, combined with institutional pressures and uncertainties about the role of the Seventh Amendment in patent eligibility determinations, have somewhat blurred the distinction between law and fact. After reviewing the BBiTV case in particular, I move on to examine these contributing factors and their implications for how courts handle disputed facts in patent eligibility cases.
BBiTV’s petition, filed by Supreme Court specialist Jeffrey Lamken, does not directly attack the Supreme Court’s two-step framework from Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). Rather, the petition focuses on how courts should handle disputed facts about conventionality when deciding eligibility on summary judgment under Fed. R. Civ. P. 56. This approach deliberately parallels Question 1 in the parallel pending petition in Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461 (U.S. filed Oct. 21, 2024). Although somewhat longwinded, Lamken presents the question as follows:
Courts assess whether patent claims are patent-eligible under 35 U.S.C. §101 using the two-step test articulated in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). At Alice Step 1, courts ask whether claims are directed to a patent-ineligible concept, such as an abstract idea. If so, courts consider at Step 2 whether the claims recite additional elements sufficient to transform the claims into a patent-eligible application of the abstract idea.
At Alice Step 2, courts look to whether additional claim elements involve more than performance of “ ‘ well-understood, routine, [or] conventional activit[ies]’ previously known to the industry.” 573 U.S. at 225. Whether claim elements are well-understood, routine, or conventional is a “question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert. denied, 140 S. Ct. 911 (2020). Federal Rule of Civil Procedure 56(a) prohibits summary judgment where there is a “genuine dispute as to any material fact.” Here, the Federal Circuit affirmed summary judgment of patent ineligibility under § 101 despite a genuine factual dispute over whether claim elements were well-understood, routine, or conventional.
This petition presents the same issue as Question 1 of the pending petition in Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461, and should be held for that petition. The question presented is:
Whether there is a patent-specific exception to Rule 56, such that courts may grant summary judgment of patent ineligibility despite genuine disputes of material fact regarding whether claim elements are well-understood, routine, or conventional at Alice Step 2.
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Background: The case involves five patents related to electronic program guide technology. The the ‘026 patent family (U.S. Patent Nos. 10,028,026; 9,648,388; 10,536,750; and 10,536,751) claims a three-layer templated approach for automatically generating program guides. The architecture comprises a background layer providing visual elements, a template layer defining reserved areas, and a content layer populated with program information. The system allows content providers to upload metadata that automatically populates this structure – a capability BBiTV argued was unconventional at the time of invention. The fifth patent (U.S. Patent No. 9,973,825) addresses content discovery by dynamically adjusting category presentation based on viewing history. The patent introduces a login process to identify individual viewers and track their consumption patterns, using this data to reorder content categories for faster navigation.
The case was before W.D.Tex. Judge Alan Albright who sided with the accused infringer by granting summary judgment of ineligibility after finding both patent families claimed abstract ideas under Alice step one. These were “directed to the abstract idea of receiving hierarchical information and organizing the display of video content” as well as “collecting and using a viewer’s video history to suggest categories of video content.”
BBiTV had provided expert testimony that aspects of both patent families – particularly the template-based display generation and viewer identification system – were not conventional at the time of invention. The court instead relied heavily on statements in the patent specifications and selective expert testimony about templates being “known.”
Although the court’s factual conclusion here might have been correct, the patentee argues that it was not Judge Albright’s role to decide those facts at the summary judgment stage.
On appeal, the Federal Circuit affirmed. Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th 1359 (Fed. Cir. 2024). Writing for the court, Judge Reyna acknowledged that patent eligibility under § 101 “may rest on underlying factual findings” and that summary judgment requires viewing evidence “in the light most favorable to the nonmovant.” Ultimately, the court agreed with the district court that there were no genuine disputes of material fact that precluded summary judgment on the § 101 issue. On this point, the patentee saw things differently – that in fact both the district and appellate courts resolved disputed factual issues sub silento.
In its decision, the Federal Circuit distinguished two leading user interface patent eligibility cases. The court explained that while BBiTV’s claims involved program guides (a type of user interface), merely involving a user interface was insufficient to bring the claims within the eligibility holdings of Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) and Data Engine Technologies LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018). Unlike those earlier cases, which involved specific improvements to user interface structure or function, BBiTV’s claims were directed to “arranging content in a particular order” within a user guide. The court found this was “not a sufficient technological solution to a technological problem, but rather a results-oriented abstract idea.” In reaching this conclusion, the Federal Circuit analyzed both the claims and specifications, while also considering BBiTV’s evidence, including expert testimony that templates “were a known entity” at the time of invention.
To the Supreme Court: BBiTV’s petition presents a focused challenge to this procedural framework. Building on the Federal Circuit’s holding in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) that conventionality is a “question of fact,” BBiTV argues courts cannot resolve eligibility on summary judgment when there are genuine disputes about what was conventional at the time of invention.
This argument gains force from the Supreme Court’s repeated emphasis that patent law is governed by the same procedural rules as other civil litigation. See SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328, 340 (2017). If conventionality is indeed factual, BBiTV contends, Rule 56’s requirement that courts view evidence in the light most favorable to the non-movant must apply with full force.
I noted above that the question raised here is parallel to Question 1 in Island IP. Both petitions argue the Federal Circuit has created a patent-specific exception to Rule 56 that allows courts to resolve disputed facts about conventionality at summary judgment. The Island IP petition has been fully briefed but remains pending – likely because of its second question about the Federal Circuit’s Rule 36 practice and connection to the parallel Parkervision case still in briefing.
The fundamental error that BBiTV identifies stems from how the lower courts handled disputed factual issues at the summary judgment stage of the Alice patent eligibility analysis. BBiTV presented expert testimony that several elements of its patents were not “well-understood, routine, or conventional” at the time of invention – including testimony that its three-layer templated approach for program guides and its user identification system for personalizing content were innovative improvements. However, rather than viewing this evidence in the light most favorable to BBiTV as required by Rule 56, both the district court and Federal Circuit effectively resolved these factual disputes themselves. For instance, when confronted with competing evidence about the conventionality of BBiTV’s web-based content management system (WBCMS), the courts focused on testimony that the physical server was purchased “off the market” while disregarding evidence that the inventor had developed novel software applications for that server. Similarly, while BBiTV’s expert testified that the company’s method of using viewer profiles and login data to dynamically reorder content categories was “not a well-understood, routine, and conventional method,” the courts bypassed this evidence and made their own determination of conventionality. BBiTV argues this approach creates an improper “patent-specific exception” to Rule 56’s requirement that courts view evidence in the light most favorable to the non-moving party when deciding summary judgment motions.
If we traced the roots of this procedural confusion, I believe we would find a few several parallel sources in patent law jurisprudence. Most notably, courts have historically grown comfortable with judges making technically-oriented determinations that might otherwise seem factual in nature, as exemplified by the Supreme Court’s Markman decision designating claim construction as ultimately a question for the judge that is largely based upon what might be termed “legislative facts” rather than “adjudicative facts.” This precedent, combined with institutional pressures to efficiently filter out potentially abstract patents at an early stage, has led courts to increasingly treat Section 101 eligibility as primarily a legal determination, even while acknowledging its factual underpinnings. There’s also a deeper question about institutional competence – judges are generally trained to assess issues through legal reasoning rather than weighing competing expert testimony — something that arises in this context particularly given the fundamental abstract nature of the conventionality inquiry under Alice step two. Unlike traditional factual questions about what specifically existed or what was specifically done, the conventionality analysis often requires broader categorical judgments about the state of technological fields and does not, for instance, mirror the novelty analysis under Section 102.
An additional factor adding to this approach is the uncertain status of patent eligibility under the Seventh Amendment. While the Supreme Court has held that some patent validity questions implicate the right to a jury trial (in cases seeking damages), it remains unclear whether the historical fact-finding involved in assessing conventionality under Alice step two falls within this constitutional guarantee. This ambiguity has given courts additional latitude to effectively treat eligibility a pure legal question. This judicial approach has been reinforced by conclusions in several cases that factual disputes wouldn’t have mattered in eligibility determinations because the claims are clearly abstract. All this together effectively creates a sort of “super-summary judgment” standard unique to patent eligibility that come with the expectation that eligibility will be resolved before trial.
Federal Circuit Judge Dyk recently published an article on non-adjudicative facts that provides an interesting lens for examining the procedural confusion in patent eligibility cases. Timothy B. Dyk, The Role of Non-Adjudicative Facts in Judicial Decisionmaking, 76 Stan. L. Rev. Online 10 (2023). He emphasizes that while courts legitimately rely on facts beyond the immediate case record to develop legal doctrine, we need better processes to ensure reliability of these broader factual determinations. As Dyk observes, courts have sometimes been “casual” in their approach to non-adjudicative facts, bypassing traditional evidentiary standards. This tendency may also help explain why courts have felt empowered to resolve conventionality disputes at summary judgment despite facially conflicting expert testimony.