Berkheimer decision is a tool to protect software, bio, and chemical patents

The Federal Circuit’s Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) decision holds that the question of whether terms in a patent claim represent well-understood, routine, or conventional activity is a question of fact, not law. This holding gives prospective and current patent owners another way to combat the Supreme Court’s decision in Alice on what types of inventions can be patented i.e., what inventions constitute “patent eligible subject matter.” Berkheimer has potential for broad implication in both litigation and patent prosecution.

Before diving into the details of Berkheimer, here is a recap of the Supreme Court’s Alice decision. In Alice, the Supreme Court introduced a new two-part test to determine whether patent claims are directed to patent eligible concepts – that is, whether they are direct to nothing more than an abstract idea. This test has primarily been used against patents directed towards software, computers, biological, and chemical inventions.

The first step under Alice is to determine whether claims are directed to an “abstract idea.” If not, then the claims are patent eligible. If yes, then you examine the claims under step two: Do the claims add additional elements that amount to something more?

One way to show something more is to demonstrate that the claims are not directed to well-understood, routine or conventional concepts.

This is where Berkheimer comes in.

In litigation, this means that a patentee may survive summary judgment if they can demonstrate an issue of fact as to whether the patent claims are directed towards well-understood, routine, or conventional activity. Berkheimer may also buck the trend of accused infringes being granted attorney’s fees after a patent is invalidated under the Alice test.

In prosecution, Berkheimer led the USPTO to introduce guidelines for changes to how USPTO patent examiners apply Alice under MPEP § 2106.07(a) (Formulating a Rejection For Lack of Subject Matter Eligibility) and MPEP § 2106.07(b) (Evaluating Applicant's Response). The guidelines can be found here: https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF 

The new guidelines require a patent examiner to support a conclusion as to whether something is well-understood, routine, or conventional activity with factual evidence, which is something that patent examiners did not need to do prior to Berkheimer. Requiring evidentiary support should give patent applicants more clarity and could result in issuance of a patent if an examiner cannot find support.

The USPTO identified four types of factual evidence that a patent examiner may use: 

1.        Patent applicant’s statements

These are statements made in the patent application or in other documents that describe or indicate that an element of a patent claim is well-understood, routine, conventional, or a “commercially available product.” The USPTO emphasized that not describing an element cannot be the only basis for a finding that the element is well-understood, routine, or conventional.

2.        Court decisions identified in MPEP § 2106.05(d)(II) that have found a concept as well-understood:

Computer:

• Receiving or transmitting data over a network
• Performing repetitive calculations
• Electronic recordkeeping
• Storing and retrieving information in memory
• Electronically scanning or extracting data from a physical document
• A web browser’s back and forward button functionality

Bio/Chem:

• Determining the level of a biomarker in blood by any means
• Using polymerase chain reaction to amplify and detect DNA
• Detecting DNA or enzymes in a sample
• Immunizing a patient against a disease
• Analyzing DNA to provide sequence information or detect allelic variants
• Freezing and thawing cells
• Amplifying and sequencing nucleic acid sequences
• Hybridizing a gene probe

Other

• Recording a customer’s order
• Shuffling and dealing a standard deck of cards
• Restricting public access to media by requiring a consumer to view an advertisement
• Identifying undeliverable mail items, decoding data on those mail items, and creating output data
• Presenting offers and gathering statistics
• Determining an estimated outcome and setting a price
• Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price

3.        Public documents

This includes printed patents, books, manuals, review articles, or other sources that describe the state of the art and discusses what is well-known and in common use in the relevant industry. Importantly, there is a difference between a document disclosing a concept and describing a concept as “well-known.” For example, an obscure document that may disclose a concept does not automatically mean that the concept is well-known.

4.         Official notice

The patent examiner may take “official notice” of something being “well-understood” without citing facts only if the examiner’s position is capable of instant and unquestionable demonstration as being well-known.” As a classic example, an examiner may take official notice that all circles have a center. If the patent applicant challenges the office notice, the USPTO examiner must then provide factual support in at least one of the above identified forms or through an affidavit or declaration.

Berkheimer may be an early signal of the courts shifting away from many post-Alice decisions that invalidated patents. It remains to be seen just how far the USPTO and the courts will take Berkheimer. In the meantime, patent owners and applicants should see Berkheimer as another tool in their tool box.