No. 19-103
WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20002
IN THE
Supreme Court of the United States
————
STRIKEFORCE TECHNOLOGIES, INC.,
Petitioner,
v.
SECUREAUTH CORPORATION,
Respondent.
————
On Petition for a Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit
————
REPLY BRIEF FOR PETITIONER
————
SALVATORE P. TAMBURO
CHARLES W. SABER
Counsel of Record
S. GREGORY HERRMAN
BLANK ROME LLP
1825 Eye St. N.W.
Washington, D.C. 20006
(202) 420-2200
stamburo@blankrome.com
csaber@blankrome.com
gherrman@blankrome.com
Counsel for Petitioner
August 30, 2019
CORPORATE DISCLOSURE STATEMENT
Pursuant to this Court’s Rule 29.6, petitioner
StrikeForce Technologies, Inc. makes reference to its
corporate disclosure statement in its Petition for a
Writ of Certiorari filed on July 19, 2019.
INTRODUCTION
In its Brief in Opposition to Petition for Writ of
Certiorari (“Opposition”), Respondent presents three
brief arguments against granting the Petition for a
Writ of Certiorari (“Petition”), arguing that Petitioner
did not properly allege error by the court below,
Petitioner waived its argument, and that Petitioner
failed to show how the resolution of HP Inc., fka
Hewlett-Packard Company, Petitioner v. Steven E.
Berkheimer, Respondent, 18-415 (petition filed September 28, 2018) (“Berkheimer SCT”) would affect the
outcome of this case. At base, Respondent’s arguments all ultimately suffer from the same basic flaw.
Respondent presumes that this Court, should it grant
certiorari in Berkheimer SCT, will merely reverse or
affirm the Federal Circuit’s opinion in Berkheimer v.
HP, Inc. fka Hewlett-Packard Co., 881 F.3d 1360 (Fed.
Cir. 2018) (“Berkheimer CAFC”) without providing any
comment to or alteration of that opinion.
Respondent’s presumption, however, of a binary
choice for this Court in deciding Berkheimer SCT, is
implausible. As set forth in detail in the Petition,
there is considerable debate within the Federal Circuit
itself as to the proper interpretation of Berkheimer
CAFC and the multitude of issues that the decision
raised. These various views, as well as other issues
raised by the Federal Circuit’s Berkheimer CAFC
decision, are specifically discussed in the Berkheimer
SCT certiorari submissions of the parties and the
amici, and are all issues to be considered by this
2
Court should it grant certiorari in Berkheimer SCT.
Respondent essentially ignores, and thereby does not
challenge, the aspects of the Petition that describe
these various views of Berkheimer CAFC, as well as
the explanation of why this Court’s decision, should
it grant certiorari in Berkheimer SCT, will almost
certainly require reversal and remand of this case.
Once these aspects of the Petition are considered, as
they should be, it becomes evident that Respondent’s
arguments are no reason to deny the Petition. The
Court should hold this Petition pending its decision on
whether to grant certiorari in Berkheimer SCT, and
should it do so, hold this Petition pending its decision
in Berkheimer SCT.
I. Petitioner Has Properly Identified Error
In the Decision Below
With almost no explanation, Respondent merely
asserts that the Petition does not allege any error
below or advocate for any specific change to any
existing legal standard. Opposition at 4. Respondent
is wrong. The entire thrust of the Petition is that the
Federal Circuit committed error because it did not
analyze Berkheimer CAFC properly in this case. That
is why the Petition discusses in detail the different
ways in which various judges in the Federal Circuit
view Berkheimer CAFC, as well as the multitude of
open issues from Berkheimer CAFC. Petition at 8-13.
To complete the circle, the Petition then explains
exactly why the resolution of those issues by this Court
will almost certainly require a reversal and remand.
Petition at 13-17. And as in any hold petition,
Petitioner asks this Court to direct the lower court to
decide this case in accordance with this Court’s
Berkheimer SCT decision. The reason for this presentation in the Petition is simple; it explains the reasons
3
why the Federal Circuit erred in this case and it
requires the appropriate relief from this Court.
Of course, no one can identify a specific error in the
Federal Circuit’s decision below in this case with
certainty because it issued its decision without an
opinion under Federal Circuit Rule 36. But that is
exactly why the Petition’s approach to assigning error
was the correct one. The Petition, quite correctly,
pointed out the various views and explained why a
reversal and remand should occur after Berkheimer
SCT is decided to correct the error by the Federal
Circuit. No more is required.
II. Petitioner Did Not Waive Its Argument
In an even shorter argument, Respondent alleges
that Petitioner waived its argument because it did
not set forth some new legal standard to be followed
in the court below. Opposition at 4. Once again,
Respondent’s argument misses the point. The whole
point of the Petition, as explained above, is that the
court below did not analyze and apply Berkheimer
CAFC correctly. That issue, as Respondent concedes,
was raised before the court below. And that is exactly
what Petitioner asserts in the Question Presented
(“Whether the Federal Circuit conducted the proper
analysis under step two of Alice . . .”) (Petition at (i)).
Accordingly, there is no waiver.
III. The Petition Explains In Detail How the
Outcome of Berkheimer SCT Would Affect
The Outcome Here
In what appears to be its principal argument,
Respondent asserts that the Petition does not show
how the result in Berkheimer SCT would affect the
outcome in this case. According to Respondent, if the
Court were to reverse Berkheimer CAFC, this Court
would be ruling that no fact finding is ever necessary
4
in a patent-eligibility case, and thus, no fact finding
would be required in this case. If this Court were to
agree that Berkheimer CAFC was correctly decided, no
remand would be necessary because the Federal
Circuit already considered Berkheimer CAFC when
issuing its decision below. Opposition at 5.
But Respondent can only make this “heads I win,
tails you lose” binary choice argument by ignoring
almost all of the arguments presented in the Petition.
As explained in the Petition, there are multiple
reasons why this Court’s decision would require a
remand. In fact, the last few pages of the Petition
(pp. 13-17) are devoted entirely to explaining exactly
why this Court’s decision should require a remand in
this case. Petitioner does not repeat those arguments
here, but does reiterate that a reversal and remand
will likely be required if this Court were to decide
Berkheimer SCT either on the “substantive” question
of what is required for patent-eligibility (e.g., the
importance of the teachings in the specification, the
role of novelty in a patent-eligibility analysis, the
proper level of proof, etc. (Petition 13-15)), or the
“procedural” aspects of Berkheimer CAFC (e.g., is some
aspect of patent-eligibility decided as a matter of fact,
and if so, what discovery will be allowed, the role of
expert opinions, whether factual disputes are decided
by the court or the jury, etc. (Petition 15-17)).
The only argument presented by Petitioner to which
Respondent even tries to respond is Petitioner’s observation that it is impossible to know how the Federal
Circuit analyzed this issue because its decision was
rendered without opinion under Federal Circuit Rule
36. According to Respondent, the Federal Circuit must
have considered the impact of Berkheimer CAFC
because, as binding precedent, the panel was required
5
to follow Berkheimer CAFC. Opposition at 5-6. Once
again, Respondent’s observation misses the point.
While it is correct that Berkheimer CAFC was cited
and argued by the parties below, the proper application of Berkheimer CAFC is undoubtedly a hotlydebated topic within the Federal Circuit (as well as in
the legal community). Precisely because there are
so many differing views on this subject, Petitioner’s
reliance on Rule 36 is completely appropriate. The
simple and undenied fact is that because the decision
below was entered under Rule 36, no definitive
conclusion can be made as to whether Berkheimer
CAFC was properly applied in this case.1
CONCLUSION
Respondent’s narrow view of the issues confronting
this Court, should it grant certiorari in Berkheimer
SCT, is incorrect. Viewed in its proper context, Petitioner plainly alleged error below, waived nothing and
explained in detail the many reasons why the decision
of this Court in Berkheimer SCT would almost certainly require a reversal and remand. Accordingly, the
Petition for Writ of Certiorari should be held pending
this Court’s decision whether to grant certiorari in
Berkheimer SCT and if so, held pending this Court’s
decision in Berkheimer SCT and disposed of as
appropriate in light of the Court’s decision in that case.
1
Respondent contends that Petitioner misidentified that panel
below, and as a result, Petitioner’s argument that the outcome
in this case was panel driven is meritless. Opposition at 6-7. The
important point that Petitioner was making is that, as observed
by HP in its Petition for Writ of Certiorari, the outcome of appeals
on this issue “will depend entirely on the membership of the
panel.” Petition at 14 (quoting the HP Petition at 34). That
concern about decisions being driven by panel membership is a
valid (and uncontested) one regardless of the specific membership
of the Federal Circuit panel in this case.
6
Respectfully submitted,
SALVATORE P. TAMBURO
CHARLES W. SABER
Counsel of Record
S. GREGORY HERRMAN
BLANK ROME LLP
1825 Eye St. N.W.
Washington, D.C. 20006
(202) 420-2200
stamburo@blankrome.com
csaber@blankrome.com
gherrman@blankrome.com
Counsel for Petitioner
August 30, 2019
WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20002
IN THE
Supreme Court of the United States
————
STRIKEFORCE TECHNOLOGIES, INC.,
Petitioner,
v.
SECUREAUTH CORPORATION,
Respondent.
————
On Petition for a Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit
————
REPLY BRIEF FOR PETITIONER
————
SALVATORE P. TAMBURO
CHARLES W. SABER
Counsel of Record
S. GREGORY HERRMAN
BLANK ROME LLP
1825 Eye St. N.W.
Washington, D.C. 20006
(202) 420-2200
stamburo@blankrome.com
csaber@blankrome.com
gherrman@blankrome.com
Counsel for Petitioner
August 30, 2019
CORPORATE DISCLOSURE STATEMENT
Pursuant to this Court’s Rule 29.6, petitioner
StrikeForce Technologies, Inc. makes reference to its
corporate disclosure statement in its Petition for a
Writ of Certiorari filed on July 19, 2019.
INTRODUCTION
In its Brief in Opposition to Petition for Writ of
Certiorari (“Opposition”), Respondent presents three
brief arguments against granting the Petition for a
Writ of Certiorari (“Petition”), arguing that Petitioner
did not properly allege error by the court below,
Petitioner waived its argument, and that Petitioner
failed to show how the resolution of HP Inc., fka
Hewlett-Packard Company, Petitioner v. Steven E.
Berkheimer, Respondent, 18-415 (petition filed September 28, 2018) (“Berkheimer SCT”) would affect the
outcome of this case. At base, Respondent’s arguments all ultimately suffer from the same basic flaw.
Respondent presumes that this Court, should it grant
certiorari in Berkheimer SCT, will merely reverse or
affirm the Federal Circuit’s opinion in Berkheimer v.
HP, Inc. fka Hewlett-Packard Co., 881 F.3d 1360 (Fed.
Cir. 2018) (“Berkheimer CAFC”) without providing any
comment to or alteration of that opinion.
Respondent’s presumption, however, of a binary
choice for this Court in deciding Berkheimer SCT, is
implausible. As set forth in detail in the Petition,
there is considerable debate within the Federal Circuit
itself as to the proper interpretation of Berkheimer
CAFC and the multitude of issues that the decision
raised. These various views, as well as other issues
raised by the Federal Circuit’s Berkheimer CAFC
decision, are specifically discussed in the Berkheimer
SCT certiorari submissions of the parties and the
amici, and are all issues to be considered by this
2
Court should it grant certiorari in Berkheimer SCT.
Respondent essentially ignores, and thereby does not
challenge, the aspects of the Petition that describe
these various views of Berkheimer CAFC, as well as
the explanation of why this Court’s decision, should
it grant certiorari in Berkheimer SCT, will almost
certainly require reversal and remand of this case.
Once these aspects of the Petition are considered, as
they should be, it becomes evident that Respondent’s
arguments are no reason to deny the Petition. The
Court should hold this Petition pending its decision on
whether to grant certiorari in Berkheimer SCT, and
should it do so, hold this Petition pending its decision
in Berkheimer SCT.
I. Petitioner Has Properly Identified Error
In the Decision Below
With almost no explanation, Respondent merely
asserts that the Petition does not allege any error
below or advocate for any specific change to any
existing legal standard. Opposition at 4. Respondent
is wrong. The entire thrust of the Petition is that the
Federal Circuit committed error because it did not
analyze Berkheimer CAFC properly in this case. That
is why the Petition discusses in detail the different
ways in which various judges in the Federal Circuit
view Berkheimer CAFC, as well as the multitude of
open issues from Berkheimer CAFC. Petition at 8-13.
To complete the circle, the Petition then explains
exactly why the resolution of those issues by this Court
will almost certainly require a reversal and remand.
Petition at 13-17. And as in any hold petition,
Petitioner asks this Court to direct the lower court to
decide this case in accordance with this Court’s
Berkheimer SCT decision. The reason for this presentation in the Petition is simple; it explains the reasons
3
why the Federal Circuit erred in this case and it
requires the appropriate relief from this Court.
Of course, no one can identify a specific error in the
Federal Circuit’s decision below in this case with
certainty because it issued its decision without an
opinion under Federal Circuit Rule 36. But that is
exactly why the Petition’s approach to assigning error
was the correct one. The Petition, quite correctly,
pointed out the various views and explained why a
reversal and remand should occur after Berkheimer
SCT is decided to correct the error by the Federal
Circuit. No more is required.
II. Petitioner Did Not Waive Its Argument
In an even shorter argument, Respondent alleges
that Petitioner waived its argument because it did
not set forth some new legal standard to be followed
in the court below. Opposition at 4. Once again,
Respondent’s argument misses the point. The whole
point of the Petition, as explained above, is that the
court below did not analyze and apply Berkheimer
CAFC correctly. That issue, as Respondent concedes,
was raised before the court below. And that is exactly
what Petitioner asserts in the Question Presented
(“Whether the Federal Circuit conducted the proper
analysis under step two of Alice . . .”) (Petition at (i)).
Accordingly, there is no waiver.
III. The Petition Explains In Detail How the
Outcome of Berkheimer SCT Would Affect
The Outcome Here
In what appears to be its principal argument,
Respondent asserts that the Petition does not show
how the result in Berkheimer SCT would affect the
outcome in this case. According to Respondent, if the
Court were to reverse Berkheimer CAFC, this Court
would be ruling that no fact finding is ever necessary
4
in a patent-eligibility case, and thus, no fact finding
would be required in this case. If this Court were to
agree that Berkheimer CAFC was correctly decided, no
remand would be necessary because the Federal
Circuit already considered Berkheimer CAFC when
issuing its decision below. Opposition at 5.
But Respondent can only make this “heads I win,
tails you lose” binary choice argument by ignoring
almost all of the arguments presented in the Petition.
As explained in the Petition, there are multiple
reasons why this Court’s decision would require a
remand. In fact, the last few pages of the Petition
(pp. 13-17) are devoted entirely to explaining exactly
why this Court’s decision should require a remand in
this case. Petitioner does not repeat those arguments
here, but does reiterate that a reversal and remand
will likely be required if this Court were to decide
Berkheimer SCT either on the “substantive” question
of what is required for patent-eligibility (e.g., the
importance of the teachings in the specification, the
role of novelty in a patent-eligibility analysis, the
proper level of proof, etc. (Petition 13-15)), or the
“procedural” aspects of Berkheimer CAFC (e.g., is some
aspect of patent-eligibility decided as a matter of fact,
and if so, what discovery will be allowed, the role of
expert opinions, whether factual disputes are decided
by the court or the jury, etc. (Petition 15-17)).
The only argument presented by Petitioner to which
Respondent even tries to respond is Petitioner’s observation that it is impossible to know how the Federal
Circuit analyzed this issue because its decision was
rendered without opinion under Federal Circuit Rule
36. According to Respondent, the Federal Circuit must
have considered the impact of Berkheimer CAFC
because, as binding precedent, the panel was required
5
to follow Berkheimer CAFC. Opposition at 5-6. Once
again, Respondent’s observation misses the point.
While it is correct that Berkheimer CAFC was cited
and argued by the parties below, the proper application of Berkheimer CAFC is undoubtedly a hotlydebated topic within the Federal Circuit (as well as in
the legal community). Precisely because there are
so many differing views on this subject, Petitioner’s
reliance on Rule 36 is completely appropriate. The
simple and undenied fact is that because the decision
below was entered under Rule 36, no definitive
conclusion can be made as to whether Berkheimer
CAFC was properly applied in this case.1
CONCLUSION
Respondent’s narrow view of the issues confronting
this Court, should it grant certiorari in Berkheimer
SCT, is incorrect. Viewed in its proper context, Petitioner plainly alleged error below, waived nothing and
explained in detail the many reasons why the decision
of this Court in Berkheimer SCT would almost certainly require a reversal and remand. Accordingly, the
Petition for Writ of Certiorari should be held pending
this Court’s decision whether to grant certiorari in
Berkheimer SCT and if so, held pending this Court’s
decision in Berkheimer SCT and disposed of as
appropriate in light of the Court’s decision in that case.
1
Respondent contends that Petitioner misidentified that panel
below, and as a result, Petitioner’s argument that the outcome
in this case was panel driven is meritless. Opposition at 6-7. The
important point that Petitioner was making is that, as observed
by HP in its Petition for Writ of Certiorari, the outcome of appeals
on this issue “will depend entirely on the membership of the
panel.” Petition at 14 (quoting the HP Petition at 34). That
concern about decisions being driven by panel membership is a
valid (and uncontested) one regardless of the specific membership
of the Federal Circuit panel in this case.
6
Respectfully submitted,
SALVATORE P. TAMBURO
CHARLES W. SABER
Counsel of Record
S. GREGORY HERRMAN
BLANK ROME LLP
1825 Eye St. N.W.
Washington, D.C. 20006
(202) 420-2200
stamburo@blankrome.com
csaber@blankrome.com
gherrman@blankrome.com
Counsel for Petitioner
August 30, 2019
6
