The Patently-O blog recently reported on the new petition for writ of certiorari in R&L Carriers, Inc. v. Intermec Technologies Corp. [Cert. petition]. The question presented asks:
Do Fed. R. Civ. P. 56(c), Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) and Celotex Corp. v. Catrett, 477 U.S. 317 (1986) prohibit a court from entering a summary judgment nding that an invention is ineligible for patent protection when the record contains uncontroverted, relevant evidence establishing that there is at least a genuine issue of material fact as to whether the claim is “directed to” an abstract idea?
Stated differently, where’s the factual inquiry?
I couldn’t help but be reminded of the classic Wendy’s commercial:
While the Federal Circuit has recently been fond of saying that §101 is a question of law, the court in the past has repeatedly said that factual issues can underlie the §101 analysis:
Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .
Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
It is well-established that “whether the asserted claims … are invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we review without deference.” AT & T Corp. v. Excel Commc’ns, Inc.,172 F.3d 1352, 1355 (Fed.Cir.1999). As a question of law, lack of statutory subject matter is a “ground [for affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 88, 63 S.Ct. 454. While there may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified any relevant fact issues that must be resolved in order to address the patentability of the subject matter of Comiskey’s application. Moreover, since we would review a Board decision on the issue of patentability without deference, see AT & T, 172 F.3d at 1355, the legal issue concerning patentability is not “a determination of policy or judgment which the agency alone is authorized to make.” Chenery, 318 U.S. at 88, 63 S.Ct. 454.
In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)(Judge Dyk writing for the court).
Moreover, in McRo v. Bandai, the Federal Circuit pointed to a lack of evidence in an abstract idea challenge:
2. Claims Directed To
Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.
McRO v. Bandai, 837 F.3d 1299, 1314 (Fed. Cir. 2016)(emphasis added).
In the administrative context, the PTO’s solicitor’s office noted in its briefing of Apple v. Ameranth:
The Board’s § 101 analysis is reviewed for legal error, while its underlying factual findings are reviewed for substantial evidence. See Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).
USPTO Brief in Apple et al. v. Ameranth at page 13 (Associate Solicitor Joe Matal signing for the Office).
“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”
USPTO Brief in Apple et al. v. Ameranth at page 20 (Associate Solicitor Joe Matal signing for the Office).
In Versata II, the Federal Circuit stated:
The section 101 analysis applied by the PTAB was not legally erroneous under Mayo and Alice. And its underlying fact findings and credibility determinations are supported by substantial evidence in the record. See Microsoft Corp. v. Proxyconn, Inc., Nos. 14-1542, -1543, 789 F.3d 1292, 1297, 2015 WL 3747257, at *2 (Fed.Cir. June 16, 2015)(noting that as a general matter, we review the PTAB’s findings of fact for substantial supporting evidence in the record).
Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).
UPDATE 2/1/2018:
Patent eligibility under § 101 is a question of law and may involve underlying questions of fact. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016).
Move, Inc., et al. v. ReMax, Inc., et al., 2017-1463 (Fed. Cir. Feb. 1, 2018)(slip opinion at 7)(Judge Stoll writing for the court).
UPDATE 2/12/2018:
Patent eligibility under 35 U.S.C. § 101 is ultimately an issue of law we review de novo. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017). The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016).
Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 6).
The 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. Any fact, such as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). Like indefiniteness, enablement, or obviousness, whether a claim recites patent eligible subject matter is a question of law which may contain underlying facts. Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016) (“Indefiniteness is a question of law that we review de novo, [] subject to a determination of underlying facts.”); Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014) (“Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 is a question of law that we review without deference, although the determination may be based on underlying factual findings, which we review for clear error.”); Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1047 (Fed. Cir. 2016) (en banc)(“Obviousness is a question of law based on underlying facts.”). We have previously stated that “[t]he § 101 inquiry `may contain underlying factual issues.'” Mortg. Grader, 811 F.3d at 1325 (emphasis in original) (quoting Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013)). And the Supreme Court recognized that in making the § 101 determination, the inquiry “might sometimes overlap” with other fact-intensive inquiries like novelty under § 102. Mayo, 566 U.S. at 90.
Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 12).
Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.
Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 14).