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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." 

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About this Author

Michael C. Newman, Intellectual Property Attorney, Mintz Levin, Law firm

Michael's practice is focused on his work with the US International Trade Commission (USITC).  His cases in federal courts also include patents, trade secrets, and other intellectual property matters. The areas of technology in which Michael has particular experience include biochemistry, biotechnology, chemistry, computer software, mechanical devices, medical devices, semiconductors, and converged devices.

Before joining Mintz Levin, Michael worked with the law firms Pepper Hamilton LLP and Fish & Richardson PC. He has also worked as a software engineer and has conducted...

Kevin Amendt, Technology Specialist, Mintz Levin Law Firm
Technology Specialist

As a Technology Specialist and registered Patent Agent, Kevin's focus is on IP law, including patent procurement and IP litigation.

Kevin’s practice includes all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patentability, infringement, and invalidity analysis. He also assists on due-diligence projects and reexaminations.

Kevin is involved in patent litigation, including infringement and invalidity issues, and other intellectual property disputes. Kevin plays an active role in analyzing prior art, infringement material, and discovered documents to formulate and support litigation positions.