Berkheimer En Banc: HP Asks Whole Court to Consider whether Eligibility is Predominately Factual

by Dennis Crouch

In its February 2018 decision in Berkheimer v. HP, the Federal Circuit – led by Judge Moore – held that fundamental elements of the patent eligibility check question are based mostly on thoughts of fact.  That keeping appears in tension with prior Federal Circuit holdings, these as Intellectual Ventures I LLC v. Cash A person Fin. Corp., 850
F.3d 1332 (Fed. Cir. 2017) and OIP Techs., Inc. v., Inc.,
788 F.3d 1359 (Fed. Cir. 2015).

In its new petition for en banc rehearing, HP asks the courtroom to reconser — raising certain thoughts:

  1. Is the threshold inquiry of patent eligibility less than 35 U.S.C. § 101 a question of legislation without having underlying factual difficulties that might avoid summary judgment?
  2. Is the acceptable inquiry less than Alice’s phase 2 whether or not the statements completely transform an abstract notion into a patent-eligible application, or just “whether the invention describes very well-recognized, regimen, and typical activities”?
  3. Is a statement in a patent specification reciting that the invention is new and enhances on the prior art more than enough to produce a genuine difficulty of substance fact that precludes summary judgment as to patent eligibility less than 35 U.S.C. § 101?

The situation has very good shot at currently being heard by the full courtroom.  I hope that the courtroom would concur with Judge Moore that underlying factual difficulties are possible in the eligibility investigation, the exercise is not “a predominately factual just one that ‘opens the door in equally actions of the Alice inquiry for the introduction of an inexhaustible array of extrinsic proof, these as prior art, publications, other patents, and specialist view.’” (HP Petition, quoting Judge Reyna’s dissent in Aatrix).

  • Read through HP’s petition listed here: Berkheimer_v._HP_Inc.
  • Amicus filings have a rapid timeline for en banc petitions (7 days?)
  • The brief quoted my website article statement that the decision is “in sizeable tension with prior procedure of eligibility investigation.”

Patent Eligibility: Underlying Inquiries of Actuality



Dennis Crouch

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