Summary Judgment After Berkheimer
Recorded On: 01/31/2019
This webinar will examine what’s been happening at district courts since Berkheimer v HP Inc., the early 2018 Federal Circuit decision indicating that the determination of patent eligibility under section 101 is ultimately a question of law, but may have factual underpinnings. Our expert panel of veteran litigators will extract lessons for both plaintiffs and defendants.
Berkheimer has had an extensive reach. In the months since it was decided, more than fifty-five district court opinions have cited it – with divergent outcomes. District courts remain willing to invalidate patents under section 101 at the summary judgment or motion to dismiss stage. They have also denied summary judgment or a motion to dismiss on a section 101 challenge, pending consideration of additional evidence outside the scope of the pleadings.
This is the confusing landscape in which litigators must operate today and for at least the immediate future. HP has filed a petition for certiorari to the U.S. Supreme Court. Yet, even if cert. is granted to HP, a Supreme Court decision is still a long way off.
Our panelists will consider and analyze:
- Cases referencing Berkheimer where early 35 U.S.C. § 101 challenges were granted, such as iSentium v. Bloomberg Fin. (S.D.N.Y.)
- Finjan, Inc. v. Juniper Network, Inc. (N.D. Cal.), where the court ordered the section 101 invalidity defense be decided at trial, but the ultimate jury instructions and verdict form did not address Section 101
- Data Engine v. Google (D.Del), where the court granted a motion for judgment on the pleadings, but was reversed-in-part by the Federal Circuit
- When, in trial proceedings, it’s best to pose, or to resist, a § 101 challenge
- The distinctive approach taken by some judges in the Eastern District of Texas
- Christopher Hughes, Cadwalader, Wickersham & Taft LLP
- Frank Nuzzi, Siemens Corp. Jonathan Waldrop, Kasowitz Benson Torres & Friedman, LLP
Cadwalader, Wickersham & Taft LLP
is a Senior Counsel at Cadwalader Wickersham & Taft and head of its IP Group. Chris has more than 40 years of experience in complex patent litigations and trials in district courts and at the ITC, as well as in arbitrations, and has served as a special master. He has represented clients in several successful motions for summary judgment.
is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. He manages simple and complex U.S. patent litigation for Siemens. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance.
Kasowitz Benson Torres & Friedman, LLP
a patent litigator and managing partner of the Silicon Valley office of Kasowitz Benson Torres LLP, represents industry-leading companies such as Google, Uber and Adobe. He helped Google secure a complete dismissal on 101 grounds in a six-patent infringement case brought by Data Engine Technologies in the District of Delaware. That decision was later overturned by the Federal Circuit.