Symantec Federal Circuit Affirms Patent Ineligible Software Claims

//Symantec Federal Circuit Affirms Patent Ineligible Software Claims

Symantec Federal Circuit Affirms Patent Ineligible Software Claims

By |2018-03-25T16:54:39+00:00March 21, 2018|

Don’t Count on a Berkheimer Do-Over

Lower court’s conclusion that claim elements were not well-understood, routine and conventional is a question of fact, to which Federal Circuit must give clear error deference

  1. In Intellectual Ventures v. Symantec, a non-precedential decision, two software claims failed the Alice two-step analysis on the appellate record
  2. The Federal Circuit affirmed the lower court finding of patent ineligible software claims on the appellate record
  3. Where there is no clear error, the patent holder will have no do-over to develop the lower court record on the issue of whether the claims perform “well-understood, routine, and conventional activities to a skilled artisan”

In our blog Berkheimer v. HP Claims Apparently Overcome Alice Two-Step On Record But Hold On, We Need More Facts, we voiced concern about the Federal Circuit finding for patent holder on the issue of patent eligibility on the record, but then giving the accused another “bite of the apple.” Specifically, the Federal Circuit gave HP a do-over to develop the part of the record that the process conventionally used is the process claimed by the patent holder.

While there was some dicta in the decision that the lower court had erred on this question of fact, the facts appeared not unlike the facts in McRO where the Federal Circuit found no error.

Read Berkheimer Blog Patent Claims  Overcome Alice But Wait, We Need More Facts

In a non-precedential decision rendered on March 15, 2018 in Intellectual Ventures LLC v. Symantec Corp. et al., a different panel of the Federal Circuit squarely addressed that very concern.

Among other issues on appeal in Symantec was the district court’s grant of summary judgment of patent ineligibility under 35 U.S.C § 101 of claims 25 and 33 of U.S. Patent No. 5,537,533. While the appeal was pending, the Federal Circuit issued its decision in Berkheimer. In that case, the Federal Circuit remanded for further proceedings because “the district court erred in concluding there are no underlying factual questions to the § 101 inquiry.” Subsequently, the patent holder Intellectual Ventures filed a notice of supplemental authority arguing that “Berkheimer compels reversal and remand of the district court’s judgment that the patent claimed patent ineligible subject matter because “there is a genuine issue of material fact as to whether the ‘533 claims improve remote data mirroring in ‘an inventive manner’ or perform ‘well-understood, routine, and conventional activities to a skilled artisan.’” Op. footnote 1.

Writing for the panel, Judge O’Malley rejected those arguments because “as the district court explained in great detail, “the claims invoke conventional computer components that do not supply an inventive concept,” and “[t]he specification confirms that the individual components . . . are conventional, generic, and operate as expected.” Id. She also explained that “the district found that IV failed to offer evidence to show that the order of the steps was unconventional” and that “IV also acknowledged at oral argument that it did not offer expert testimony to show the lack of conventionality of its components.” Id. There was no error in the decision of the lower court on the factual question and so there will be no do-over.

Symantec adds to the Berkheimer and McRO and Mortgage Grader II (also discussed in the Berkheimer blog) and other precedent on the importance of developing the factual component in every § 101 inquiry — to wit “Whether claims perform well-understood, routine, and conventional activities to a skilled artisan.”

As indicated in our earlier blog, a good litigator already knows that.

What the Symantec Federal Circuit panel does, and what the Berkheimer Federal Circuit apparently failed to do, is to stay true to the principal of “judicial estoppel.” In Berkheimer, even though the accused had fair opportunity to develop the lower court record on the issue of whether the claims perform “well-understood, routine, and conventional activities to a skilled artisan” and failed to adequately do so, the Federal Circuit panel allowed the accused a do-over to develop that record.

While true that there was some dicta in the decision that the lower court had erred on this question of fact, the facts appeared not unlike the facts in McRO where the Federal Circuit found no error.

Not so in Symantec, where it was the patent holder IV this time that had the same opportunity to develop the record and failed. There was no error in the decision of the lower court on the factual question and so the Symantec Federal Circuit would give the patent holder no do-over. The Federal Circuit affirmed the lower court grant of summary judgment of patent ineligible software claims under 35 U.S.C § 101 of claims 25 and 33 of U.S. Patent No. 5,537,533.

A key take-away for a patent litigator from Symantec is to be sure to develop the lower court record on the issue of whether the claims perform “well-understood, routine, and conventional activities to a skilled artisan.” Absent clear error by the lower court on this factual question, don’t count on the Federal Circuit giving you a do-over.

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About Paul R. Juhasz