An "Unremarkable Proposition": En Banc Denials Reaffirm That § 101 Analysis May Contain Underlying Factual Issues

The per curiam US Court of Appeals for the Federal Circuit denied petitioners' requests for en banc review in the Berkheimer and Aatrix Software, Inc., cases, holding that the issue of whether a claim element is well understood, routine and conventional to a skilled artisan in the relevant field at a particular time is a fact question to be answered under normal procedural standards. Berkheimer v. HP Inc., Case No. 17-1437 (Fed. Cir., May 31, 2018); Aatrix Software, Inc. v. Green Shades Software, Inc., Case No. 17-1452 (Fed. Cir., May 31, 2018) (reh'g denied).

In February 2018, the Federal Circuit vacated a grant of summary judgment for patent ineligibility in Berkheimer and vacated a district court's grant of a motion to dismiss in Aatrix for patent ineligibility ( IP Update, Vol. 21, No. 3). In both cases, the Court emphasized the factual disputes underlying the § 101 analysis.