Berkheimer v. HP Inc. was decided by the Federal Circuit in February 2018 and stands for -- in the words of Judge Moore of that Court -- "the unremarkable proposition that whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact." The Supreme Court's patent-eligibility opinions in Mayo Collaborative Srvs. v. Prometheus Labs, Inc. and Alice Corp. v. CLS Bank Int'l had not been perfectly clear on this issue, and the Federal Circuit appeared to have taken both sides at various times. Berkheimer settled the issue, for a while at least.
HP petitioned the Supreme Court for certiorari in September 2018. In January of this year, the Court requested that the Solicitor General file a brief expressing the views of the United States in this matter. That brief finally arrived last week. In short, the Solicitor General is of the opinion that the overall lack of clarity regarding the fundamental issues surrounding patent-eligibility under 35 U.S.C. § 101 makes addressing the points of this Berkheimer premature.
As background, the Supreme Court's Alice decision set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more," nor will elements that are well-understood, routine, and conventional lift the claim over the § 101 hurdle.
While the Supreme Court did not specify whether the well-understood, routine, and conventional determination was to be carried out as a matter of law, fact, or a hybrid of both, its earlier Mayo Collaborative Srvs. v. Prometheus Labs, Inc. decision strongly suggested that the § 101 inquiry may overlap with fact-sensitive inquiries such as novelty under § 102 in at least some situations. However, the Federal circuit has stated, in OIP Techs., Inc. v. Amazon.com, Inc. that "[p]atent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo." But in other cases, different panels have implied that facts may be considered.
This came to a head in Berkheimer, where Judge Moore wrote:
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. Any fact . . . that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence. Like indefiniteness, enablement, or obviousness, whether a claim recites patent eligible subject matter is a question of law which may contain underlying facts. (Emphasis added.)
The outcome of the Court's factual analysis was that some of Berkheimer's dependent claims recite "limitations directed to the arguably unconventional inventive concept described in the specification" and therefore the case was remanded to the District Court for fact finding. Notably, Berkheimer did not win on the merits, but instead managed to get the District Court's invalidation of some of his claims reversed modulo further review.
In its petition, HP's question presented was "[w]hether 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." This question is somewhat deceptive, as the Federal Circuit explicitly stated that some patent-eligibility decisions can be made as a point of law, but others may require fact finding when the parties are in dispute over whether a claim element is well-understood, routine and conventional. HP's attempt to make this non-binary decision into a black-or-white issue does not reflect the nuances of the opinion.
Nonetheless, the Solicitor General begins his discussion with a blunt statement: "this Court's recent decisions have fostered uncertainty concerning those substantive Section 101 standards." This uncertainty lies mainly in the "the scope of the exceptions and the proper methodology for determining whether a particular patent implicates them."
Berkheimer being largely a procedural case would not be the appropriate vehicle for addressing the more fundamental substantive questions, in the Solicitor General's view. Indeed, "the allocation of decision-making authority between judge and jury . . . is deeply intertwined with the underlying legal standards that govern patent-eligibility." Thus, the Solicitor General opines that HP's question "would be difficult to answer in any cogent manner while uncertainty about the substance of the Section 101 inquiry persists." He further notes that Berkheimer's focus on step two of Alice is of limited use for purposes of clarifying § 101 since the uncertainty arises under both steps.
Indeed, any outcome of a Supreme Court ruling in Berkheimer could be rendered moot if the Court later rules on a more substantive § 101 case. The Solicitor General appears to be taking the position that there is little point to apply a Berkheimer band-aid when patent-eligibility actually needs major surgery.
The Solicitor General further observes that both parties are suggesting the Court use this case to address the larger § 101 issues. Yet, there is "significant disagreement about what the claimed invention actually comprises" in the disputed patent. The Solicitor General writes:
The district court appeared to view Berkheimer's patent as simply identifying features that it would be desirable for a software system to possess—one-to-many editing, increased efficiency, and reduced redundancy and storage costs—rather than as claiming a specific method for achieving those features and the corresponding benefits. In contrast, the court of appeals appeared to conclude that the claims at issue could be read as identifying a particular method that will achieve the desired results, and it declined to determine which view of the patent is correct in the case's current summary-judgment posture.
This implies that there is a potential problem with whether the patent conforms to the § 112(a) written description requirement. Particularly, the Solicitor General states that "[i]t would be difficult to provide meaningful clarity about Section 101's boundaries without first knowing whether and to what extent the invention represents a particular practical implementation of broader principles of software design to achieve the stated objective, or merely posits one possible way one might attempt to do so." In other words, if the scope of the invention is unclear, the Alice test is that much more difficult to apply.
The Solicitor General goes on to contend that this lack of clarity "may be exacerbated in the software-system context, in which this case arises." He even suggests that the Supreme Court is especially unequipped to address § 101 issues in software technologies, and that the software focus of Berkheimer would frustrate the Court's ability to clarify the larger principles underlying patent eligibility.
In accordance with these points, the Solicitor General concludes with the recommendation that "[r]ather than attempt to resolve broader questions of Section 101's substantive scope in the face of those difficulties, the Court should await an appropriate case that properly presents those broader questions without similar obstacles."
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. But the important outcome here is that the government is arguing to let one of the very few patent-friendly § 101 decisions from the Federal Circuit stand.
