HP World Headquarters.

The U.S. Supreme Court is dipping a toe back into the issue of patent eligibility.

Five years after a series of decisions strengthening Section 101 of the Patent Act, the high court asked the solicitor general for its views on HP v. Berkheimer. The case concerns when and how often courts can determine eligibility on the pleadings, before litigants face big discovery expenses.

The tech industry has been clamoring for high court review, saying the court's 2014 Alice decision opened the door for early, painless resolution of meritless patent infringement suits, and that Berkheimer is closing it again.

Patent owners consider the Alice test opaque at best and intellectually dishonest at worst. The U.S. Patent and Trademark Office issued new guidance to patent examiners Friday that attempts to clarify how Alice and the cases interpreting it should be applied, and two senators recently convened a meeting of industry and bar association leaders to lay the groundwork for a legislative solution.

“We see the CVSG as a small but encouraging sign. And a good chance to learn what this SG thinks about patent-eligibility,” said Alex Moss, a staff attorney at the Electronic Frontier Foundation who penned an amicus brief supporting certiorari.

Other patent lawyers said the call for the views of the solicitor general could indicate that a few justices are interested in taking the case but others are on the fence. The court could be looking to the solicitor general for a reality check on how often the Berkheimer decision actually comes into play in litigation and how much impact it's having on innovation and the tech economy.

The justices in Alice instructed courts to determine whether a patent claims abstract ideas, laws of nature or natural phenomena. If the answer is yes, and the claims can be implemented using well-understood, routine and conventional tools, then they lack an “inventive concept” and are ineligible for patent protection.

Though often criticized as an “I know it when I see it” test, Alice led to a sea change in district court patent litigation. Judges have frequently used the test to eliminate dubious patent claims on the pleadings or summary judgment. That cut down litigation costs, which in turn removed much of patent owners' settlement leverage.

But Federal Circuit Judge Kimberly Moore's opinion in Berkheimer held that some subset of those cases should not be decided by judges as a matter of law. “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination,” she wrote in Berkheimer. And, sometimes, fact issues require trials to resolve.

When the court denied en banc review, Judge Jimmie Reyna warned that “the consequences of this decision are staggering and wholly unmoored from our precedent.” Judge Alan Lourie wrote that, while he thought Moore had it right, “Section 101 issues certainly require attention beyond the power of this court.”

Four other Federal Circuit judges stood by Moore's decision, suggesting plenty of cases can still be resolved at an early stage.

That didn't mollify HP, which is represented before the Supreme Court by Morgan, Lewis & Bockius and Gibson Dunn & Crutcher. They note that in Alice, the Supreme Court stated that “we determine whether the claims at issue are directed to [a] patent ineligible concep[t]”—meaning courts should decide eligibility as a matter of law.

“There is an urgent need for this court's review,” Moss wrote amici EFF and the R Street Institute. Under Berkheimer, “district courts have consistently delayed patent eligibility rulings, reversing the trend toward early resolution.”

Inventor Steven Berkheimer is represented by Jenner & Block and Skiermont Derby. “The selection of a pronoun is not a holding,” Jenner's Adam Unikowsky wrote in opposing cert.

Some court watchers have said in recent years that the justices feel they've said enough on Section 101 and aren't interested in wading back in. But two new justices have joined the court in the last year, and one of them—Neil Gorsuch—is already showing keen interest in patent issues.