On Feb. 8, 2018, the Federal Circuit held that the question of whether certain claim limitations represent well-understood, routine, conventional activity is a question of fact. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, invention relates to digitally processing and archiving files in a digital asset management system. The specification explains that the system eliminates redundant storage of common text and graphical elements, which improves efficiency and reduces storage costs. The Federal Circuit held that the claims are directed to abstract ideas but claims 4-7 contain limitations directed to purported improvements described in the specification, which raises genuine issues of material fact as to whether the purported improvements are more than well-understood, routine, conventional activity previously known in the industry. The court reversed the lower court's summary judgment as to claims 4-7 and remanded for further fact finding as to the eligibility of those claims; the court however held claims 1-3 and 9 to be ineligible because they did not include limitations that realize the purported improvements. In its ruling, the court cautioned that the mere fact that something is disclosed in the prior art does not mean it was well-understood, routine, conventional activity or element.
Full text of the opinion is available here.
Full text of the opinion is available here.
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