Supreme Court of the United States · Official docket →

HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2017-1437 · judgment February 8, 2018

Certiorari denied · January 13, 2020

Pre-decision estimate: 9% cert probability (95% interval 6%–14%)

Before the decision, about 2.3× the 4.1% base rate. The model weighted this up for a circuit split argued in the petition, a dissent in the court below (flagged in the petition), and a Federal Circuit decision below.

Question presented

This Court has adopted a two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Both steps are reserved for the court: First, “we determine whether the claims at issue are directed to [a] patentineligible concep[t].” Second, “we * * * determine” whether “additional elements transform the nature of the claim into a patent-eligible application.” Id. at 2355 (emphases added). In this case, the Federal Circuit determined at step one that the claims are directed to an ineligible concept (an abstract idea), but at step two the court below refused to determine whether the additional elements of the claim disclose an inventive concept— declaring that the second step of the Alice framework involves a “question of fact” that could not be resolved by a court on a pretrial motion. The question presented is 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.

Counsel of record

For petitioner
David B. Salmons
Morgan, Lewis & Bockius LLP

For respondent
Adam G. Unikowsky
Jenner & Block LLP

Case

Conference history
Distributed for 3 conferences

Amicus briefs
7 cert-stage

Linked docket
18A88

Proceedings

Jan 13 2020
Petition DENIED.
Dec 23 2019
DISTRIBUTED for Conference of 1/10/2020.
Dec 20 2019
Supplemental brief of petitioner HP Inc., f/k/a Hewlett-Packard Company filed.
Dec 06 2019
Brief amicus curiae of United States filed.
Jan 07 2019
The Solicitor General is invited to file a brief in this case expressing the views of the United States.
Dec 19 2018
DISTRIBUTED for Conference of 1/4/2019.
Dec 17 2018
Reply of petitioner HP Inc., f/k/a Hewlett-Packard Company filed.
Dec 05 2018
Brief of respondent Steven E. Berkheimer in opposition filed.
Nov 14 2018
Brief amicus curiae of Askeladden LLC filed.
Nov 14 2018
Brief amici curiae of T-Mobile USA, Inc., and Sprint Spectrum L.P. filed.
Nov 14 2018
Brief amicus curiae of Computer & Communications Industry Association filed.
Nov 14 2018
Brief amici curiae of Check Point Software Technologies, Inc. and CableLabs filed.
Nov 14 2018
Brief amici curiae of Electronic Frontier Foundation and R Street Institute filed.
Nov 14 2018
Brief amicus curiae of Engine Advocacy filed.
Oct 24 2018
Motion to extend the time to file a response is granted and the time is extended to and including December 5, 2018.
Oct 22 2018
Blanket Consent filed by Respondent, Steven E. Berkheimer.
Oct 22 2018
Motion to extend the time to file a response from November 14, 2018 to December 5, 2018, submitted to The Clerk.
Oct 17 2018
Blanket Consent filed by Petitioner, HP Inc., f/k/a Hewlett-Packard Company.
Oct 15 2018
Response Requested. (Due November 14, 2018)
Oct 10 2018
DISTRIBUTED for Conference of 10/26/2018.
Oct 08 2018
Waiver of right of respondent Steven E. Berkheimer to respond filed.
Sep 28 2018
Petition for a writ of certiorari filed. (Response due November 2, 2018)
Jul 25 2018
Application (18A88) granted by The Chief Justice extending the time to file until September 28, 2018.
Jul 20 2018
Application (18A88) to extend the time to file a petition for a writ of certiorari from August 29, 2018 to September 28, 2018, submitted to The Chief Justice.
Main Document Lower Court Orders/Opinions Proof of Service