Welcome to Skilled in the Art. I'm Law.com reporter Scott Graham. Today I'm going to imagine a world where juries—not judges—call the shots on patent eligibility. I'm also going to briefly introduce you to The Patent Man. I don't know much about him, other than he's an expert in flying foam machines.

As always, email me tips on anything IP and find me on Twitter @scottkgraham.

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The Five Stages of Berkheimer: Putting Patent Eligibility to Jurors

Do you hear that denial, anger and bargaining from the defense side of the patent bar? Cut them some slack, they've been grieving the loss of early-stage Alice motions since the Federal Circuit issued its bombshell Berkheimer v. HP decision a month ago.

HP itself is still in the denial stage. It will be petitioning for rehearing in the next couple of days. In fact, HP just asked for an extension of time while it organizes its amicus army counsel tends to other pressing matters. The Federal Circuit denied the motion on Monday. But there's still some chance the court will reconsider its decision.

But there's also a substantial likelihood that Berkheimer will stick and we'll be living in a world where some—not all—Alice motions can't be resolved on the pleadings or summary judgment.

And a few lawyers have started thinking about that world will look like.

Baker Botts partner Wayne Stacy said he and his colleagues have pored through hundreds of recent patent trials, looking for any where Section 101 was argued to a jury. They haven't found one yet. “It's got all the markers of changing the practice,” he says.

In a typical software patent case, Stacy expects it to look like this:

Step 1 of Alice—Is the claim directed to an abstract idea?—remains an issue of law to be decided by the judge. If the answer is yes, then jurors will decide Step 2: Did the claims recite something more than “well-understood, routine, conventional activity” to a person of skill in the art at the time of the patent?

There's no model jury instruction on “well-understood,” “routine” and “conventional,” and Stacy doubts that many district judges will stray far from that language, which comes directly from Alice and its predecessor Mayo Collaborative Services v. Prometheus Laboratories.

That has the potential for mischief, Stacy says. When arguing novelty or obviousness, lawyers are somewhat limited by the wording of the patent claims and the prior art references. But whether something's “routine” or “conventional”—that, says Stacy, “will put a real premium on storytelling for a trial.”

Durie Tangri partner Clem Roberts still has one foot in the anger stage. He says Berkheimer is clearly mistaken when it says that defendants will have to prove something is routine or conventional by clear and convincing evidence. “You don't ever have to prove underlying factual predicates by clear and convincing evidence,” he says.

But if jury trials on Section 101 are coming, Roberts thinks they will be tried much like obviousness. If a patent claimed a method of generating dynamic web pages, he'd round up as many prior art references of dynamic web pages as possible to show they were routine and well-understood, or perhaps find a conference where the participants treated the subject as old hat.

“I suspect it will look a lot like the obviousness model,” Roberts said. “I'd treat this the exact same way.”

Whitaker Chalk partner David Skeels, who litigates cases for patent owners, said he sees one potential downside. “Defendants are typically happy to have more blanks on the jury form,” he said. Adding one more option for a defense verdict won't necessarily help his side.

But with that caveat, “I'm always happy to tell the story of my inventor” and how he or she solved a problem in the art, he said. Adding patent eligibility to trials is “eminently do-able.”

Alan Fisch of Fisch Sigler made a similar point. “A trial lawyer's story-telling talent will be of even more value when 101 is tried to a jury,” he said. “Given 101's potential impact, it will be no place for lawyers who are inaccessible to jurors.”

They're still bargaining at the Federal Circuit. On Thursday (after these interviews), the appeals court said it has not yet decided whether a judge or jury should decide Section 101 fact issues.

BlackBerry's 67 Pages of Patent Eligibility

One firm that's embraced Berkheimer, at least implicitly: Quinn Emanuel Urquhart & Sullivan. Quinn represents BlackBerry in its patent suit against Facebook. As I noted Wednesday, BlackBerry's complaint takes special care to allege that the inventions claimed in the seven patents-in-suit were not “well-understood, routine or conventional.” In fact, 67 of the complaint's 117 pages are devoted to this Alice-proofing effort.

I guess this rules out Quinn Emanuel filing an amicus brief in support of HP if Berkheimer goes en banc or before the Supreme Court … right?

Who Got the Work?

One of the fun things about covering intellectual property is discovering technologies I'd never dreamed existed, let alone got patented. Until today, I had no idea there were such things as “flying foam machines.” I would not have imagined there's a competitive market for “high impact, environmentally friendly” flying foam advertising. But two Florida companies are battling it out before U.S. District Judge Robin Rosenberg of the Southern District of Florida for control of this space in Snow Master Evaporative Snow Systems v. SmilecloudsUSA.

➤ The dispute: Snow Master is the company behind Flogo Clouds, foam that's shaped into words or logos which then float into the sky on lighter-than-air gas. Snow Master accuses Smileclouds of infringing U.S. Patents 7,883,649 and 7,919,026, both entitled “Flying foam apparatus and method of making flying foam.” SmileClouds contends that Snow Master isn't the exclusive owner of the patent rights.

➤ The attorneys: David Barman, aka The Patent Man, of North Miami Beach's The Law Office of David W. Barman, and Neil Kodsi of North Bay Village's The Law Offices of Neil Kodsi represent Snow Master. John LeRoy and Robert Tuttle of Southfield, Michigan's Brooks Kushman represent SmileClouds.

Orly Lobel on MGA Attorney Jennifer Keller

The National Law Journal this week published my Q&A with University of San Diego Law Professor Orly Lobel. It's about her book You Don't Own Me, an exploration of the legal, business and cultural implications of the famous MGA-Mattel IP battle over Bratz dolls. One exchange that ended up on the cutting-room floor was about Jennifer Keller of Keller Anderle, the attorney MGA added at the last minute to handle the second trial, which MGA won. This was Lobel's take on Keller and how she used Bratz prototype designer Carter Bryant to MGA's advantage, even though Bryant was doing work for MGA while employed by Mattel.

She wasn't the typical IP lawyer who was stuck to [conventions]. For her it was really important to tell the story in a comprehensive way that depicted the entire culture of these companies and the personalities of the people behind the scenes. For example, with Carter Bryant, I think the previous teams had this impulse to say, “Even if he stole from Mattel, we'll accept that story but we'll distance ourselves by using these doctrines of 'His idea wasn't copyrightable,' or 'His initial designs were remote enough from what they eventually put to use.'”

For Keller, she didn't want to separate it out that way. She just wanted to think about the justice of all of the story, where we have a behemoth, dominant corporation. We have an entrepreneur, Isaac Larian, who's really passionate about toys. And we have Carter Bryant, who's a pawn, and his ideas aren't really appreciated by his employer, Mattel. When I talked to the jurors, they really remembered Keller's message in terms of justice and fairness, and not the legalistic doctrines of intellectual property.

One of the other attorneys I interviewed said to me that [Keller] was not treated in the most respectful way by the other team. Somebody said something like, “She's used to state court.” And Judge David Carter got quite upset by that. He had a working relationship with her in the past, and he came from state court as well.

Once again, storytelling is the key! You can read the rest of the Q&A here. Better yet, buy the book. It's a snappy read on a seminal IP case.

In the meantime, have a good weekend, whether you're enjoying it with a good book, flying foam or some Berkheimer grief counseling.