Patent Riffs & Links: HP v. Berkheimer…En Banc?

Skilled in the Art: Extreme PTO Makeover | Berkheimer En Banc? | New Life for Zombies | LAW.COM
Scott Graham: "[HP] argues that the decision works ‘a sea change’ in the court’s patent eligibility jurisprudence. She says it’s contrary to multiple Federal Circuit and Supreme Court precedents that have ruled patent eligibility is a question of law—not fact—to be decided by a judge at an early, “threshold” stage of the proceedings…Treating eligibility as a factual matter will ‘make patent litigation more complex, expensive, and lengthy.’ Hard to argue with that! Ho notes that U.S. District Judge Marilyn Huff of San Diego has already canceled an Alice summary judgment hearing on the basis of Berkheimer."

Berkheimer En Banc: HP Asks Whole Court to Consider whether Eligibility is Predominately Factual | PATENTLYO.COM
Dennis Crouch: "The case has good shot at being heard by the whole court. I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis, but would also hold that the exercise is not ‘a predominately factual one that ‘opens the door in both steps of the Alice inquiry for the introduction of an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.’ ‘ (HP Petition, quoting Judge Reyna’s dissent in Aatrix)."

EFF Asks Federal Circuit Not to Make It Harder To Challenge Software Patents | EFF.ORG
"A pair of recent decisions from the Federal Circuit threaten to undermine Alice. In these rulings – Berkheimer v. HP [PDF] and Aatrix Software v. Green Shades Software [PDF] – the court suggests that the decision under Alice, about what makes an invention patent eligible, is a heavily factual inquiry. If these rulings stand, district courts may become much less likely to apply Alice early in litigation. Defendants would be required to go through expensive discovery, or even a full jury trial, to get a ruling on patent eligibility. Once again, trolls with software patents would be able to use the ruinous cost of defending a patent suit to force settlements, even when their patents are invalid.

EFF, together with the R Street Institute, has filed an amicus brief [PDF] urging the Federal Circuit to rehear the Berkheimer appeal en banc. This means that all the active judges of the appeals court would review the decision. We argue that the panel’s decision is both wrong on the law and bad policy. The panel’s decision disregards long-standing Supreme Court and Federal Circuit law that makes it the judge’s role to construe patents. On policy, we describe how early Alice rulings have helped end many of the most abusive patent trolling campaigns."

Berkheimer Files Response to HP’s Petition for En Banc Review | PATENTDOCS.ORG
"This week, Berkheimer filed a reply, arguing that en banc review is unnecessary. Berkheimer’s position is set forth rather directly — the case law supports consideration of facts in the § 101 evaluation, and HP’s parade of horribles is a hyperbolic overreaction to a decision that merely clarifies the status quo.

To that point, Berkheimer points out that the panel explicitly stated that summary judgment on eligibility issues can be appropriate when there is no material issue of fact regarding whether the claims recite an inventive concept. Berkheimer further noted that authority to support the position that facts can be considered runs through the Supreme Court’s Mayo Collaborative Servs. v. Prometheus Labs., Inc. decision as well as a number of Federal Circuit decisions. Notably, [Enfish, McRO, Amdocs, Thales Visionix] and several other cases exhibit § 101 outcomes that turned on issues of fact… Berkheimer continues by asserting that the panel correctly applied this law…"

Skilled in the Art: The Section 101 Case You’ve Never Heard Of. Plus, PTAB Predictions | LAW.COM
Scott Graham on Berkheimer’s Response: “In Microsoft [v. i4i], the Supreme Court expressly noted that Section 101 is a ‘prerequisite for issuance of a patent,’ that it involves factual determinations by the PTO during examination … and that those same factual questions bear on a Section 101 patent-eligibility invalidity defense,” Hanrath [on behalf of Berkheimer] states in formal opposition filed Thursday…And that’s true if you squint really hard. In the preamble to Microsoft v. i4i, Justice Sonia Sotomayor does explain that PTO examiners make factual determinations when deciding whether a claimed invention clears Sections 101, 102 and 103 and various other conditions of patentability. Two paragraphs later, she notes that the same factual questions ‘will also bear on an invalidity defense in an infringement action.'”



Welcome to the Aatrix: Facts, Lots of Facts, Available for Eligibility Analyses? | K&L GATES
“These cases suggest that litigants with patents challenged on § 101 grounds may consider highlighting disputed questions of fact that courts should decide. This strategy may allow challenged claims to survive a motion to dismiss or summary judgment challenge, as seen in these cases. Patent applicants may also consider factual challenges to § 101 rejections made by examiners. Moving forward, en banc or Supreme Court review of this issue is plausible, as both of these opinions were written by Judge Moore and joined by Judge Taranto. We will continue to monitor any changes to these newly-available § 101 arguments.”