Berkheimer v. Hp Inc.
890 F.3d 1369
Fed. Cir.2018Background
- Steven Berkheimer appealed a district court finding that certain claims of U.S. Patent No. 7,447,713 were ineligible under 35 U.S.C. § 101; the Federal Circuit panel affirmed in part and reversed in part and denied rehearing en banc.
- The panel held that whether claim elements are “well‑understood, routine, and conventional” to a person of ordinary skill is a question of fact that can preclude resolution on Rule 12(b)(6) or summary judgment when disputed.
- For Berkheimer claims 4–7 the panel found genuine factual disputes (in part based on statements in the patent specification) sufficient to deny summary judgment; claims 1–3 and 9 were affirmed ineligible.
- The panel emphasized that the challenger bears the burden to prove ineligibility, and that evidence beyond the specification is required to establish that additional claim elements are conventional.
- Concurring judges agreed with denying en banc review but urged legislative or Supreme Court clarification of § 101. A noted dissent argued the panel’s factual‑question approach departs from precedent treating § 101 as a question of law and risks importing §§ 102/103 factfinding into eligibility.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether whether a claim element or combination is “well‑understood, routine, and conventional” is a question of fact | Berkheimer: such inquiries involve historical facts (who, what, when, how) and may require weighing evidence and credibility; factual disputes preclude dismissal/summary judgment | HP: conventionality can be decided as a matter of law on the record; claims here are routine and ineligible | Held: It can be a question of fact; where genuine disputes exist, Rule 56/12 standards apply and summary judgment or dismissal is improper |
| Proper procedural standard on 12(b)(6) and Rule 56 when § 101 challenged | Berkheimer: courts must accept plausible factual allegations and not resolve factual disputes at pleading stage (citing Aatrix) | HP: courts may resolve § 101 early where claims and patent specification show ineligibility | Held: Apply ordinary Rule 12(b)(6) and Rule 56 standards; patent assertions may create factual disputes preventing early resolution |
| Burden of proof in § 101 challenges | Berkheimer: challenger bears burden to show ineligibility under 35 U.S.C. § 282(a) and must present evidence that claim elements are conventional | HP: (implicit) defendant may obtain early dismissal if record (specification, expert evidence) shows conventionality | Held: challenger bears burden; conclusory expert statements are insufficient to carry it at summary judgment |
| Scope of § 101 inquiry vs. §§ 102/103 (inventive concept vs. novelty/obviousness) | Berkheimer concurrence: step‑two factual inquiries may overlap with prior art/novelty matters; but § 101 remains distinct | Dissent (Reyna): treating inventive‑concept factual can conflate § 101 with §§ 102/103 and undermine ability to decide eligibility as a legal question | Held: Court limited holding narrowly: factual issues may exist as to whether claim elements are well‑understood, routine, conventional, but precedents rejecting mere computer implementation remain intact |
Key Cases Cited
- Thompson v. Keohane, 516 U.S. 99 (describing historical facts as recitals of external events)
- Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (establishing two‑step § 101 framework for abstract ideas)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (articulating need for an "inventive concept" and noting overlap with novelty inquiries)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.) (holding conventionality can be a factual question that may preclude summary judgment)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir.) (applying Rule 12(b)(6) standards and finding plausible factual allegations can defeat dismissal)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (§ 101 can consider whether claims improve computer functionality)
- Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir.) (limiting inventive concept to what is claimed, not to underlying discoveries)
- Diamond v. Diehr, 450 U.S. 175 (claims integrating mathematical formulas into practical application can be patent eligible)
- Gottschalk v. Benson, 409 U.S. 63 (mental processes and abstract ideas are not patentable)
- Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369 (Fed. Cir.) (inventive concept cannot be the natural law itself)
- Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052 (Fed. Cir.) (anticipation is a factual question)