This year, we celebrated the fourth anniversary of the Supreme Court’s landmark ruling in Alice v. CLS Bank. Alice made clear that generic computers do not make abstract ideas eligible for patent protection. Following the decision, district courts across the country started rejecting ineligible abstract patents at early stages of litigation. That has enabled independent software developers and small businesses to fight meritless infringement allegations without taking on the staggering costs and risks of patent litigation. In other words, Alice has made the patent system better at doing what it is supposed to do: promote technological innovation and economic growth.

Unfortunately, Alice’s pro-innovation effects are already in danger. As we’ve explained before, the Federal Circuit’s decision in Berkheimer v. HP Inc. turns Alice upside-down by treating the legal question of patent eligibility as a factual question based on the patent owner’s uncorroborated assertions. That will just make patent litigation take longer and cost more because factual questions generally require expensive discovery and trial before they can be resolved.

Even worse, Berkheimer gives patent owners free rein to actually create factual questions because of its emphasis on a patent’s specification. The specification is the part of the patent that describes the invention and the background state of the art. The Patent Office generally does not have the time or resources to verify whether every statement in the specification is accurate. This means that, in effect, the Berkheimer ruling will allow patent owners to create factual disputes and defeat summary judgment by inserting convenient “facts” into their patent applications.

If permitted to stand, the decision will embolden trolls with software patents to use the ruinous cost of litigation to extract settlement payments for invalid patents—just as they did before Alice. Unfortunately, district courts and patent examiners are already relying on Berkheimer to allow patents that should be canceled under Alice to survive in litigation or issue as granted patents. Berkheimer is good news for patent trolls, but it’s bad news for those most vulnerable to abusive litigation threats—software start-ups, developers, and users.

Now that the Federal Circuit has declined rehearing en banc (with all active judges participating in the decision), only the Supreme Court can prevent Berkheimer’s errors from turning Alice into a dead letter. That’s why EFF, together with the R Street Institute, has filed an amicus brief [PDF] urging the Supreme Court to grant certiorari, and fix yet another flawed Federal Circuit decision.

Our brief explains that Berkheimer is wrong on the law and bad for innovation. First, it exempts patent owners from the rules of federal court litigation by permitting them to rely on uncorroborated statements in a patent specification to avoid speedy judgment under Alice. Second, it conflicts with Supreme Court precedent, which has never required factfinding deciding the legal question of patent eligibility. Third, it threatens to undo the innovation, creativity, and economic growth that Alice has made possible, especially in the software industry, because Alice empowers courts to decide patent eligibility without factfinding or trial.

We hope the Supreme Court grants certiorari and confirms that patent eligibility is a legal question that courts can answer, just as it did in Alice.  

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