The Federal Circuit Says Whether a Claim is Well-Understood, Routine and Conventional is a Question of Fact

By:  Eunhee Park

In Berkheimer v. HP Inc., case number 17-1437, in the U.S. Court of Appeals for the Federal Circuit, decided February 8, 2018, the Federal Circuit vacated the district court’s summary judgment of invalidity of claims under 35 U.S.C. 101, subject matter eligibility, and remanded the case back to the district court to resolve factual issues regarding whether the dependent claims archive documents in a manner that improve the aspects of the disclosed archival system or perform well-understood, routine, and conventional activities.

In its two-part Alice test, the Federal Circuit iterated that claims involving more than well understood, routine, and conventional activities pass the second step of the test. The Federal Circuit also said that “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,” noting, “whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

The technology in the case relates to digital asset management. While the Federal Circuit found several claims (e.g., claim 1) to be subject matter ineligible, comparing those claims as being similar to collecting and recognizing of data without further improvements to computer technology, the Federal Circuit noted that there is a genuine issue of fact as to whether some of the improvements claimed in dependent claims are “well-understood, routine and conventional.”

Specifically, a question arose as to whether “storing a reconciled object structure in the archive without substantial redundancy,” claimed in claim 4, and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items,” claimed in claim 5 are well understood, routine and conventional.

According to the specification, “storing object structures in the archive without substantial redundancy improves system operating efficiency and reduces storage costs.” The Federal Circuit noted that “the specification referring to reducing redundancy and enabling one-to-many editing contradict the district court’s finding that the claims describe well understood, routine, and conventional activities,” and raises “a genuine issue of material fact in light of the specification.”

As in some of the prior cases in which the Federal Circuit reversed or vacated the lower courts’ subject matter eligibility decisions relating to computer-implemented inventions, the Berkheimer Court looked to the description in the specification for any improvements to computer functionality, and reflection of those improvements in the claims.