Gov’t Suggests that neither Berkheimer nor Hikma are ready for Supreme Court

by Dennis Crouch

HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer (Supreme Court 2019)

The Supreme Court has previously identified patent eligibility as a question of law.  However, in Berkheimer, the Federal Circuit recognized that the ultimate legal conclusion may be based upon factual conclusions.  For example, the level of skill in the art (or state-of-the-art) is a classic factual question that may be relevant to the question of inventive contribution (Alice step 2).

The fact-law divide is important for a number of issues. For example:

• Motion to dismiss or Summary Judgment: at the pretrial stage, it is appropriate for the court to determine questions of law but not to resolve disputed issues of material fact.
• Evidentiary standards: factual conclusions generally demand a higher standard of evidence and particular burden of proof.
• Who decides: factual determinations are often given to a jury to decide rather than a judge and “no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.” 7th Amendment.
• Statement of Facts: If the judge is deciding questions of fact and law, the judge must “find the facts specially and state its conclusions of law separately.” FRCP 52(a).
• Appellate burden: Factual conclusions are generally given deference on appeal while questions of law are reviewed de novo.

Following the Berkheimer decision, HP petitioned the Supreme Court for certiorari on the following question:

Whether 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.

Following briefing, including 7 briefs amici, the Supreme Court then requested that the Solicitor General provide the views of the U.S. Gov’t on the question.  That CVSG brief has now been filed.

SG Brief Berkheimer

The SG also filed a parallel brief in Hikma on the question of “Whether methods of using drugs to treat medical conditions are patent-eligible processes under Section 101.”

SG Brief Hikma

Both briefs open with the following line: “In the view of the United States, the petition for a writ of certiorari should be denied.” Both briefs go on to explain the high level of uncertainty in the law of eligibility:

[A]lthough the Court has construed Section 101 and its precursors for well over a century, its recent decisions have introduced substantial uncertainty regarding the proper Section 101 inquiry.

[The] new framework has generated substantial uncertainty in the lower courts concerning the scope of the exceptions and the proper methodology for determining whether a particular patent implicates them. In Hikma, for example, the majority and dissenting opinions in the Federal Circuit each pointed to different aspects of the language and logic of this Court’s decision in Mayo in reaching diametrically opposite conclusions regarding the patenteligibility of a concrete method of medical treatment.

SG Brief Berkheimer.  According to the Government, the Berkheimer case puts the cart before the horse. Berkheimer focuses in on procedural questions when the substance of the law remains uncertain. Instead of taking this case, the SG suggests first granting review on a case to clarify substantive standards.

The question presented in HP’s petition focuses on whether the Section 101 patent-eligibility inquiry calls for a legal determination by courts, a factual determination by juries, or both. That question would be difficult to answer in any cogent manner while uncertainty about the substance of the Section 101 inquiry persists. At a minimum, the answer to the question HP’s petition poses may be significantly affected by additional guidance this Court provides about the proper analysis for ascertaining whether Section 101 encompasses a particular patent claim. Granting review in this case to address that procedural question would therefore be premature. The Court instead should grant review in an appropriate case to clarify those substantive standards, and it should defer resolution of ancillary issues such as the judge-jury question raised in HP’s petition.

Id.