Askeladden Submits Amicus Brief at Supreme Court in HP Inc. v. Berkheimer

Calls for review of Federal Circuit ruling pertaining to the nature of patent eligibility analysis.


Date: November 15, 2018


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New York, NY — Askeladden filed an amicus curiae brief supporting HP Inc.’s petition for a writ of certiorari to the Supreme Court in HP Inc. v. Berkheimer. In the brief, Askeladden asserts that the Federal Circuit, in its decision in Berkheimer v. HP Inc., has departed from the well-established principle that the entire patentable subject matter inquiry under 35 U.S.C. § 101 is a legal determination by an agency or court.

In February, the Federal Circuit held that a patent eligibility determination may contain underlying issues of fact and, where there is a genuine dispute with respect to a pertinent fact, may be inappropriate for a motion to dismiss or summary judgment.  Askeladden argued that the Federal Circuit’s holding will have significant ramifications and merits Supreme Court review.

As the brief states:

The particular issue here concerns the very nature of the § 101 inquiry: whether it is a purely legal question, or whether it has factual elements. The significance of this issue is obvious. If the questions are purely legal, they can be resolved at the outset of litigation. If not, then the distraction and expense of patent litigation will increase exponentially. That is why the Court’s error here warrants this Court’s immediate attention.

Askeladden filed the brief as part of its Patent Quality Initiative, which seeks to improve patent quality and promote innovation by challenging poor quality patents, addressing questionable patent practices, and regularly filing amicus briefs in cases concerning important issues of patent law.

Askeladden is represented by Sidley Austin LLP.

About the Patent Quality Initiative

Askeladden is an education, information and advocacy organization with the goal of improving the understanding, use and reliability of patents in financial services and other industries. As part of its Patent Quality Initiative, Askeladden strives to promote better patents and patent holder behaviors by regularly filing amicus briefs, Inter Partes Reviews (IPRs) and engaging in educational activities.