Background
Berkheimer held patents on an improved system for archiving digital documents — specifically, a system that parsed and stored digital files in a “manifest” format that reduced redundancy and improved searchability and editing efficiency. Berkheimer argued the system improved upon conventional document archiving by parsing files into components and eliminating redundant storage of identical components, thus saving storage space and improving performance. HP Inc. was accused of infringement through its printing software systems.
The district court found the patent claims invalid under § 101, concluding at Alice Step 2B that all claimed elements were well-understood, routine, and conventional in the art and thus provided no “inventive concept” beyond the abstract idea of parsing and archiving digital files. Berkheimer appealed, arguing that whether a claimed element was well-understood, routine, and conventional involved factual questions that could not be decided on summary judgment without a proper factual record.
The Court’s Holding
The Federal Circuit reversed the § 101 invalidity finding as to some claims and affirmed as to others. The court held that the question of whether a claim element or combination represents something well-understood, routine, and conventional in the field involves a question of fact. Accordingly, when a patentee presents allegations or evidence that a claimed element was not conventional or well-understood at the time of filing, § 101 cannot be resolved as a matter of law on summary judgment without addressing those factual questions.
As to certain of Berkheimer’s claims, the specification contained descriptions of specific unconventional steps in the archiving process — improvements over conventional document parsing that, if accepted, would preclude summary judgment on § 101. The court remanded those claims for further proceedings. As to other claims that recited only generic computer functions without specific technical detail, the court affirmed ineligibility.
Key Takeaways
- Alice/Mayo Step 2B — the “inventive concept” inquiry — contains factual questions about whether claimed elements were well-understood, routine, and conventional that may not be resolvable as a matter of law on summary judgment when there is a genuine dispute.
- Patent specifications that explicitly describe how claimed elements differ from conventional practice — and how they provide technical improvements — create factual disputes that can survive § 101 dispositive motions.
- Defendants seeking to invalidate software patents under § 101 at the pleading or summary judgment stage must address the factual question of conventionality, not merely argue that the abstract idea is old — particularly when the specification describes technical improvements.
- Patent prosecutors and litigators should include detailed descriptions of how the claimed invention improves upon or differs from conventional approaches, creating evidentiary hooks for Berkheimer-based factual disputes at Step 2B.
Why It Matters
Berkheimer v. HP was a significant development in the ongoing effort to define the boundaries of Alice’s § 101 framework. By identifying factual elements within Step 2B, the Federal Circuit constrained the scope of § 101 motions to dismiss and motions for summary judgment — making it harder for defendants to defeat patents on eligibility grounds without developing a full factual record. This partially offset the wave of § 101 invalidations that had occurred since Alice, giving patent holders better tools to defend their software and computer system patents through the litigation process.
The decision prompted the PTO to issue a revised § 101 examination guidance in January 2019, which incorporated the Berkheimer factual framework and required examiners to identify specific evidence showing that claimed elements were well-understood, routine, and conventional before rejecting claims under Step 2B. Together, Berkheimer and the 2019 PTO guidance substantially moderated the application of Alice in both prosecution and litigation, creating a more nuanced framework for evaluating software patent eligibility than the blunt instrument approach that had prevailed in the immediate post-Alice years.