Juries Will Play Role in Some Questions of Patent Eligibility

by Jo Dale Carothers, Ph.D.

In ruling on motions to dismiss and motions for summary judgment, courts have found a number of patents ineligible under 35 U.S.C. § 101 as a matter of law.  However, in Berkheimer v. HP, the Court of Appeals for the Federal Circuit indicated that in certain instances, the determination of patent eligibility under § 101 involves questions of fact and thus are questions for juries.

In Berkheimer, Mr. Berkheimer sued HP for infringing U.S. Patent No. 7,447,713 (the “’713 patent”), which covers “digitally processing and archiving files in a digital asset management system.”  Arguing that certain claims were patent-ineligible under § 101, and thus invalid, HP moved for summary judgment, which the district court granted.  Mr. Berkheimer appealed to the Federal Circuit.

The Federal Circuit cited well-settled law that “[s]ummary judgment is appropriate when ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’”  Furthermore, patent eligibility under § 101 is reviewed de novo because it is ultimately a matter of law.  However, the Federal Circuit stated that “[t]he patent eligibility inquiry may contain underlying issues of fact,” which are for juries to decide.

The Supreme Court recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.  In Alice v. CLS Bank, the Supreme Court further stated, “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” But in addressing cases involving questions of patent eligibility, the Supreme Court “instructs courts to distinguish between claims that recite patent ineligible subject matter and those that ‘integrate the building blocks into something more.’”  This led to a two-part test where part one of the test is to determine whether the claims are directed to “a patent ineligible concept.”  If that is the case, then the court “consider[s] the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”  This second part of the test is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”

In Berkheimer, the Federal Circuit stated that “[t]he 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,” which must be proven by clear and convincing evidence.  While as in the case of “indefiniteness, enablement, or obviousness, whether a claim recites patent eligible subject matter is a question of law,” it “may contain underlying facts.”

The Federal Circuit acknowledged that “not every §101 determination contains genuine disputes over the underlying facts,” which means that many such determinations can be resolved on motions to dismiss or motions for summary judgment.  However, if there are genuine disputes over the underlying facts, then it is for a jury to make the factual determination of whether the claim element or claimed combination is well-understood, routine, and conventional to a skilled artisan in the relevant field.

Mr. Berkheimer argued that certain of his patent claims involve combinations that “improve[] computer functionality through the elimination of redundancy and the one-to-many editing feature, which provide[] inventive concepts.”  The Federal Circuit found that the ‘713 patent discusses the invention’s purported improvements over the prior art and found that certain claims contain limitations to the “arguably unconventional inventive concept described in the specification.”  As a result, the Court found that there was “at least a genuine issue of material fact” as to those claims, “making summary judgment inappropriate.”

The Federal Circuit decided Berkheimer a little over three and a half years ago, but since then the number of trials has greatly diminished due to COVID-19.  Therefore, few juries have had the opportunity to address this issue.  However, it has been suggested that as the number of trials increase again, we may see more patent eligibility questions put in front of juries.  Some suggest that it will be much easier for defendants to use experts and supporting evidence to convince a jury that a patent claim is well-understood, routine, and conventional to a skilled artisan in the relevant field than it is to convey the more technically-detailed aspects of anticipation and obviousness defenses.