The Federal Circuit’s Berkheimer v HP opinion appears to have opened the doors to patentable subject matter being a question of fact that will frequently go to trial.
The case involves a patent directed to digital processing and archiving in a digital asset management system. The Federal Circuit affirmed the Northern District of Illinois ruling that certain claims of the patent in suit were indefinite. But it affirmed in part and vacated in part the grant of summary judgment that other claims were invalid under Section 101.
“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,” wrote Judge Moore in an opinion in which she was joined by Judges Taranto and Stoll.
Moore went on to point to previous Federal Circuit rulings that show the question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.
“As our cases demonstrate, not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry,” Moore wrote.
A “blockbuster” opinion?
Dennis Crouch, associate professor at the University Missouri School of Law, on the widely-read Patently-O blog described Moore declaring the 101 inquiry as a factual determination as an “important statement”. Crouch said the decision is “in substantial tension with prior treatment of eligibility analysis that has generally permitted resolution of the issue on the pleadings as a pure question of law”.
He added: “The court needs an en banc powwow to clarify the issues here.”
Mark Lemley, Durie Tangri partner and Stanford Law School professor, described it as a “blockbuster” opinion on Twitter. He added that “patentable subject matter is now frequently going to be a question of fact that goes to trial”.
Other patent attorneys on Twitter asked whether it is a sign of “the pendulum swinging back on 101” and advised that during prosecution you “might as well start throwing in technical effect into every claimed feature in specification”.
Schwabe Williamson & Wyatt lawyers noted that as far as they are aware this is the first case since Alice to be remanded for trial on the issue of patent eligibility.
The Berkheimer opinion brings the number of Federal Circuit 101 rulings up to four for 2018, according to Michael Borella, partner at McDonnell Boehnen Hulbert & Berghoff, on the Patents Docs blog.
“Out of these, two have found the claims at issue to be patent-eligible, and one has found the claims to be ineligible,” said Morella. “This case splits the baby, finding some claims ineligible and others in need of further review.”
He said the holding and the supportive reasoning appears to be the first time the Federal Circuit has explicitly required a district court to make findings of fact to justify a Section 101 decision, rather than determinations being addressed purely as a matter of law.
He added this case “may be further-reaching than the other three” because it provides some clarity on evidentiary standard applicable to a 101 challenge on summary judgment. “This may result in the USPTO having to update its § 101 guidance for examiners and the PTAB.”
Borella concluded the Berkheimer opinion may make it more difficult to invalidate patents on the pleadings, as well as at the summary judgment stage.
James Hanrath of Much Shelist argued for Steven Berkheimer.
William Peterson of Morgan Lewis & Bockius argued for HP.
