Presented by John Goodhue
A brief of Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In an opinion by Judge Moore, the Federal Circuit held that whether a claim element or ordered combination is well-understood, routine, and conventional to a skilled artisan — the second step of the Alice patent-eligibility framework under 35 U.S.C. Section 101 — is a question of fact. Where the specification described improvements to computer functioning that were captured in certain claims, a genuine dispute of material fact precluded summary judgment of ineligibility. The court affirmed ineligibility as to some claims and vacated and remanded as to others. (Rehearing en banc was later denied; the panel opinion controls.)
Berkheimer v. HP Inc., decided February 8th, 2018. A panel of the Federal Circuit, in an opinion by Judge Moore, held that whether a claim element or an ordered combination is well-understood, routine, and conventional to a skilled artisan — the question that governs step two of the Alice patent-eligibility test — is a question of fact. Because the record raised a genuine factual dispute as to some claims, summary judgment of ineligibility could not stand across the board. Here's the brief.
Steven Berkheimer owns U.S. Patent No. 7,447,713, which relates to digitally processing and archiving files in a digital asset management system. The system parses files into multiple objects, tags those objects to create relationships between them, and then analyzes and compares them — manually or automatically — against archived objects to detect variations. The specification describes storing that data in a way that eliminates redundancy, improves operating efficiency, and reduces storage costs, and lets a single edit to a linked object propagate across every document that uses it.
Berkheimer sued HP for infringement in the Northern District of Illinois. On summary judgment, the district court held that claims 1 through 7 and claim 9 were patent-ineligible under Section 101 — reasoning that the claims described only well-understood, routine, and conventional computer functions performed at a high level of generality. It separately held claims 10 through 19 invalid as indefinite, finding the term "minimal redundancy" not amenable to a reasonably certain meaning.
Berkheimer appealed both rulings. The eligibility appeal is what makes the case significant, and it turned on a question the Federal Circuit had not squarely resolved: whether that step-two inquiry is a pure question of law a court can decide on summary judgment, or one that can depend on disputed facts.
Patent eligibility runs through Section 101 and the two-step framework the Supreme Court set out in Mayo and Alice. Step one asks whether a claim is directed to a patent-ineligible concept, such as an abstract idea. If it is, step two searches for an inventive concept — an element or ordered combination that is more than well-understood, routine, and conventional activity already known in the field.
The question here was not the meaning of Section 101, but its procedure: can the "well-understood, routine, and conventional" determination at step two be resolved as a matter of law, or is it a factual issue that can defeat summary judgment?
The court held it is factual.
Patent eligibility, the court explained, is ultimately a question of law that may rest on underlying facts — like indefiniteness, enablement, and obviousness. Any fact pertinent to the invalidity conclusion, it added, must be proven by clear and convincing evidence. And whether something is well-understood, routine, and conventional goes beyond what was simply known in the prior art: the mere fact that a feature is disclosed somewhere does not make it conventional to a skilled artisan.
That does not make every eligibility case unresolvable early. Many, the court stressed, have properly been decided on the pleadings or on summary judgment, and nothing in the decision cast doubt on them.
Here, though, the specification described improvements to computer functioning — eliminating redundancy, improving efficiency, and enabling one-to-many editing.
Applying that, the court parsed the claims one by one. Claim 1 did not require eliminating redundancy or one-to-many editing at all, so it captured none of the purportedly unconventional features; the court affirmed ineligibility for claim 1, claims 2 and 3, and claim 9. Claims 4 through 7 were different. They recited storing data in the improved, redundancy-eliminating way the specification described — and HP had offered no evidence that doing so was conventional. On that record, whether those claims performed only well-understood, routine, and conventional activity was a genuine issue of material fact. The court therefore vacated summary judgment as to claims 4 through 7 and remanded, while making clear it was not deciding those claims are eligible — only that summary judgment was premature. It affirmed the indefiniteness ruling on claims 10 through 19.
Berkheimer stands for the rule that the step-two question — whether a claim element or ordered combination is well-understood, routine, and conventional — is a question of fact, and that a specification's description of a technological improvement can create a genuine dispute that forecloses summary judgment. The panel opinion is the precedent; the full court denied rehearing en banc. The decision did not change what Section 101 requires. It clarified how, and when, eligibility may be decided.
Berkheimer v. HP Inc., 881 F.3d 1360, decided February 8th, 2018. I'm John Goodhue. Thanks for watching.
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