United States: The Federal Circuit's Berkheimer Ruling: The Necessity For Fact Finding Before Summary Judgment Under 35 U.S.C. § 101

On February 8, 2018, the Federal Circuit vacated portions of a decision from the U.S. District Court for the Northern District of Illinois in Berkheimer v. HP Inc., No. 2017-1437, 2018 U.S. App. LEXIS 3040 (Fed. Cir. Feb. 8, 2018). The Federal Circuit's decision is instructive for its determination that granting a motion for summary judgment is improper when the motion presents factual questions stemming from the patent specification. Id. at *22-23.

The patent-at-issue is entitled "System and Method for Archiving and Outputting Documents or Graphical Items." U.S. Patent No. 7,447,713. The patented system purports to parse files, identify objects and compare the newly identified objects to archived objects to determine if variations exist, thus eliminating "redundant storage of common text and graphical elements, which improves system operating efficiency and reduces storage costs." Berkheimer, at *2. Following the district court's Markman hearing, HP moved for summary judgment on the grounds that Claim 10 is invalid as indefinite under 35 U.S.C. § 112 and that Claims 1-7 and 9 are patent-ineligible under 35 U.S.C. § 101. Id. HP's motion for summary judgment was granted by the district court and an appeal was brought before the Federal Circuit.

The Federal Circuit's decision began by swiftly disposing of the indefiniteness argument, noting that, under 35 U.S.C. § 112, patent claims "must 'particularly point[] out and distinctly claim[] the subject matter' regarded as the invention. A lack of definiteness renders the claims invalid." Id. at *3 (quoting Nautilus, Inc. V. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125 (2014)). Focusing on the term "minimal redundancy" contained within Claim 10 and relying on a declaration from HP's expert, the Court held that the district court's indefiniteness determination was not clearly erroneous because the term is highly subjective, and that an ordinary skilled artisan would not have known the meaning of that term. Id. at *3-4. The Court then turned to the patent-eligibility inquiry pursuant to 35 U.S.C. § 101.

The Court began its § 101 analysis by setting forth the legal standard for summary judgment motions noting that, under the Federal Rules of Civil Procedure, "[s]ummary judgment is appropriate when 'there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.'" Berkheimer, at *7 (quoting FED. R. CIV. P. 56(a)). The Court then stated that "[p]atent eligibility under 35 U.S.C. § 101 is ultimately an issue of law . . . ." Id. at *7-8 (quoting Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017)). The Court further stated that the patent eligibility inquiry "may contain underlying issues of fact." Id. at *7-8 (quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016)).

Applying the now familiar two-step Alice1 test for determining patent eligibility under § 101, the Court stated: "[f]irst, we determine whether the claims at issue are directed to a patent-ineligible concept. If so, we consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application." Id. at *10 (internal citation and quotations omitted). Applying step one of Alice, the Court determined that the claims-at-issue are directed to the abstract idea of "parsing and comparing data" and "parsing, comparing, storing and editing data." Id. at *12. Relying on prior precedent, the Court found these functions to be conventional computer components. See In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). As a final Alice step one question, the Court considered "'whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.'" Berkheimer, at *14 (quoting Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017)). Yet, based upon the lack of evidence in the record and Mr. Berkheimer's own admission that parsers have existed for years, the Court concluded that the claims are directed to an abstract idea and proceeded to step two of the Alice inquiry. Id. at *14-15.

Under step two of the Alice analysis, the Court considered if the claim elements either individually or as an ordered combination transform the nature of the claims into patent-eligible subject matter because the "claim limitations involve more than performance of well-understood, routine, [and] conventional activities previously known to the industry." Id. at *15 (internal citation and quotations omitted). Prior to reaching a determination, the Court clearly compared indefiniteness, enablement, and obviousness, all questions of law, to "[t]he § 101 inquiry that may contain underlying factual issues." Id. at *16 (emphasis in original) (internal citation and quotations omitted). The Court further noted that the Supreme Court has also recognized that in "making the § 101 determination, the inquiry 'might sometimes overlap' with other fact-intensive inquiries like novelty under § 102." Id. at *16 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)). With this foundational landscape, the Court concluded that the district court erred in concluding there were no underlying factual questions to the § 101 inquiry. Id. at *23. The Court reasoned that "whether something is well-understood, routine and conventional to a skilled artisan at the time of the patent is a factual determination . . ." that "goes beyond what was simply known in the prior art." Berkheimer, at *17-18. The Court concluded that, at this stage of the case, "[w]hether claims 4-7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims." Id. at *23.

In our view, the Federal Circuit's Alice step two analysis in Berkheimer represents a notable reminder that district courts should address all factual issues before finding patent-ineligible subject matter pursuant to 35 U.S.C. § 101.


1 See Alice Corp. Pty. Ltd. v. CLS Bank Int'l., 134 S. Ct. 2347 (2014).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions