United States: Federal Circuit Requires More Evidence Before Invalidating As Ineligible

Last Updated: February 23 2018
Article by Eric L. Sophir and Kamyar Maserrat

In Berkheimer v. HP Inc., the US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a district court's grant of summary judgment of patent ineligibility under 35 U.S.C. § 1011. The Federal Circuit made clear that patent ineligibility under Section 101 is, like indefiniteness, enablement and obviousness, a question of law that "may contain underlying factual issues," particularly as to whether the claims recite steps that are merely well-understood, routine and conventional for a person of ordinary skill in the art, and thus insufficient to transform an abstract idea into a patentable invention2. By reaffirming that Section 101 is not a pure question of law, this decision could make it more difficult for district courts to grant summary judgment to invalidate claims as patent ineligible, and could further impact the US Patent and Trademark Office's (USPTO) burden during examination as well.

Steven Berkheimer sued HP Inc. in the Northern District of Illinois for allegedly infringing his patent on digitally processing and archiving files in a digital asset management system. The district court construed the claims, and then granted HP's motions for summary judgment that claims one through seven and claim nine were invalid as patent ineligible under Section 101.3 Berkheimer appealed both rulings, but not the underlying claim constructions.

Before turning to the merits of the Section 101 question, the Federal Circuit found that the district court had erred by treating the first claim as representative of the other claims at issue. A claim may be treated as representing the invention only in certain situations, "such as if the patentee does not present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim or if the parties agree to treat a claim as representative."4 The court also found, "A claim is not representative simply because it is an independent claim," or serves as the primary focus of the patentee's arguments.5

The Federal Circuit held that Berkheimer had not waived his right to present separate patent-eligibility arguments for his dependent and independent claims on appeal, because he had not agreed to make claim one representative of the other claims; his dependent claims recite substantive limitations not found in claim one; and he had advanced meaningful patent-eligibility arguments that were directed only to the subject matter of certain dependent claims.6

Turning to the merits of the Section 101 issue, the Federal Circuit affirmed the district court's finding under the first step of the Alice test that the claims were directed to an abstract idea of using a generic computer for parsing and comparing data (claims one through three and nine) or parsing, comparing and storing data (claims four through seven).7 The Federal Circuit rejected Berkheimer's argument that the "parsing" limitation is sufficient to root the claims in a particular technology by transforming the data structure from source code to object code. "Limiting the invention to a technological environment does not make an abstract concept any less abstract under step one," particularly where there is no evidence "that this transformation improves computer functionality in some way."8

With regard to step two of the Alice test, the Federal Circuit considered whether the limitations of each claim, examined both individually and as an ordered combination, are sufficient to transform the abstract nature of the claim into a patent eligible application.9 The court made clear:

"The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence."10

A Section 101 analysis, then, is a question of law that "may contain underlying factual issues," which "might sometimes overlap with other, fact-intensive inquiries like novelty under § 102."11 This is not always the case, however, as "not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry." Id. at 13. Only in the latter case may summary judgment be appropriate.12

With these principles in mind, the Federal Circuit affirmed summary judgment of patent ineligibility with respect to Berkheimer's claims one through three and nine, but vacated summary judgment for claims four through seven due to material factual disputes. Claims one through three and nine, the court found, did not recite any limitations regarding the patent's allegedly inventive concept to store, analyze and compare data in an unconventional manner to eliminate redundancies and improve efficiency. Rather, those claims recited parsers, functions and generic computer equipment that the inventor himself admitted had already been known for years prior to his patent. These "conventional limitations" thus failed to transform the abstract ideas in claims one through three and nine into a patent-eligible invention.13

In contrast, the Federal Circuit found that claims four through seven contained limitations directed to the arguably unconventional inventive concepts that were disclosed in the specification but allegedly not known or practiced in the prior art. These purportedly inventive concepts involved, for example, archiving reconciled object structures without substantial redundancy (claim four), and selectively editing an object structure linked to other structures to effect a one-to-many change across multiple archived items (claims five through seven). Although HP argued, and the district court agreed, that reducing redundancy and increasing efficiency are considerations in any archival system, the Federal Circuit found that at this stage of the litigation, "there is at least a genuine issue of material fact in light of the specification regarding whether claims 4-7 archive documents in an inventive manner that improves these aspects of the disclosed archival system," or whether they merely perform "well-understood, routine, and conventional activities to a skilled artisan."14 The court thus declined to determine whether claims four through seven are patent-eligible under Section 101, but vacated the district court's summary judgment and remanded for further proceedings.

The Federal Circuit has thus reaffirmed that patent eligibility under Section 101 is a question of law resting on underlying facts. Although summary judgment of ineligibility has been and may continue to be appropriate in some cases, Berkheimer makes clear that summary judgment is not appropriate in all cases, particularly when the underlying material facts regarding the novelty or inventiveness of the claimed invention are in dispute. This decision may make challenging patents under Section 101 more difficult, as alleged infringers will need to present clear and convincing evidence that the technology at issue was well understood, routine and conventional, and thus insufficient to transform an abstract idea into a patent-eligible invention. Furthermore, the patentee may be able to create a factual dispute sufficient to defeat summary judgment by invoking the inventive disclosures in the specification and showing that they were included in the claim limitations.

Likewise, examiners in the USPTO may need to show how certain elements are well known, routine and conventional in order to sustain a Section 101 rejection, rather than merely reciting that principle in a conclusory fashion or relying on a "piece of prior art" without further explanation. Finally, Berkheimer's split decision to affirm summary judgment of invalidity of some claims while vacating summary judgment for other claims in the same patent offers an instructive "controlled experiment" for arguing when claims may or may not be patent ineligible under Section 101, or when summary judgment may or may not be appropriate.

To learn more about how the Federal Circuit's ruling in Berkheimer may impact your IP and other business operations, please contact any member of Dentons' Intellectual Property and Technology practice.


1. Berkheimer v. HP Inc., __ F.3d __, Appeal No. 2017-1437, Slip Op. (Fed. Cir., Feb. 8, 2018)

2. Slip Op. at 12 (emphasis in original; quotes omitted)

3. The district court also held, and the Federal Circuit affirmed, that claims 10–19 are invalid as indefinite. The Federal Circuit's indefiniteness analysis is also worth noting. The Court found that the claim term "minimal redundancy" is a term of degree, and thus subject to the "objective boundaries requirement." Slip Op. at 5. Berkheimer's claims, specification and prosecution history, however, provided no "objective boundary or specific examples of what constitutes 'minimal,'" nor did Berkheimer offer any expert testimony to refute the indefiniteness opinion of HP's expert. Id. at 4-6. Based on this evidence, the Federal Circuit affirmed the district court' s summary judgment of indefiniteness, while making clear that its decision does not mean that all terms of degree are necessarily indefinite. Id. at 6.

4. Slip Op. at 8

5. Id. at 7-8

6. Slip Op. at 7-8

7. Slip Op. at 8-11 (collecting cases)

8. Slip Op. at 11 (quotes omitted)

9. Slip Op. at 11-12

10. Slip Op. at 12

11. Id. at 12-13 (emphasis in original; quotes omitted)

12. Id.

13. Slip Op. at 15-16

14. Slip Op. at 17

Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com.

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
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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