October 26, 2020

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October 26, 2020

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Berkheimer v. HP Inc.: Whether Claim Elements Are Well-Known, Routine, or Conventional Is a Question of Fact

The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be resolved on summary judgement.  The case is Berkheimer v. HP Inc., case number 17-1437, in the U.S. Court of Appeals for the Federal Circuit.

Under the Alice decision, patents are invalid under 35 U.S.C. § 101 for not reciting patent eligible subject matter if they cover abstract ideas or laws of nature and do not transform them into something more than “well understood, routine and conventional activities previously known to the industry.”  While determining whether a claim recites patent eligible subject matter is a question of law, it may contain underlying facts.  And in Berkheimer, the Federal Circuit confirmed this view stating:

Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.  Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art.  The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

This confirmation has far reaching implications.  In the courtroom, Berkheimer provides a guide for patent owners to argue that the validity of their patents should not be resolved on a motion to dismiss or summary judgement.  Patent Owners can point to evidence in the claims that the invention improved upon standard industry practices to create a genuine dispute over material facts.  Doing so can help Patent Owner’s avoid early findings of invalidity.

At the United States Patent and Trademark Office, Examiner’s routinely reject applications for lacking subject matter eligibility with little to no explanation regarding why claimed elements are routine, convention, and well known in the art.  Berkheimer gives applicants ammunition to push back on the Examiner and may require the Examiner to make a detailed factual finding, similar to the current Examiner approach to novelty and obviousness analysis.

And patent practitioners may now be drafting applications to include the clear description that aspects of the invention improve upon standard industry practices.  This would provide evidence that a claim amounts to more than “well understood, routine and conventional activities previously known to the industry." 

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VIII, Number 71



About this Author

Michael C. Newman, Intellectual Property Attorney, Mintz Levin,Patent Litigation Federal Circuit Appeals International Trade Commission Federal District Court Strategic IP Monetization & Licensing

Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation, to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).

Michael represents a broad range of clients in cases involving such diverse technologies as integrated...

Kevin Amendt,Mintz, Patent Prosecution & Strategic Counseling Patent Prosecution IPRs & Other Post-Grant Proceedings

As a patent attorney, Kevin's focus is on strategic IP counseling, including patent procurement and IP litigation. He is known for identifying and capturing maximum value from his client’s innovations. His success on behalf of clients comes from his combination of strong technical and legal skills.

Kevin counsels clients on all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patent portfolio, infringement, and validity analyses. He helps clients obtain patents that reflect the technical details of their invention as well as their business plan.

Kevin is involved in intellectual property disputes. He handles post-grant proceedings before the USPTO and the Patent Trial and Appeal Board, including ex-parte re-examinations and inter-partes reviews (IPRs). He also is involved in patent litigation with experience supporting cases in federal district court and at the International Trade Commission (ITC). Kevin plays an active role in analyzing prior art, infringement material, and discovered documents to formulate and support litigation positions.

Kevin has worked on behalf of entities ranging from individual inventors and venture-backed startups to academic institutions, hospitals, and large multinationals. His experience spans broad technical fields including medical devices, software, consumer electronics, signal processing, telecommunication, robotics, artificial intelligence, business methods, mechanical systems, and biotechnology.

Kevin graduated first in class and summa cum laude from Suffolk Law’s evening program while working full time at Mintz as a patent agent. Upon graduation he received the Daniel J. Fern Award for outstanding academic achievement.

Before joining Mintz, Kevin worked as a systems engineer for Raytheon Corporation in their missile defense systems department. He has also worked for Science Applications International Corporation (SAIC), and Tangible Media, a research group with the MIT Media Laboratory. While pursuing his MS in Electrical and Computer Engineering, he focused on intelligent systems, robotics, and control.