Berkheimer Memorandum: A Big Shift, In Fact

On April 19, the USPTO issued one of the more consequential and examination-changing opinions on the subject of § 101 since its initial memoranda on Alice. The memorandum discusses Step 2B ("significantly more") of the Mayo/Alice test as applied by the Federal Circuit's opinion in Berkheimer v. HP (which is discussed here). In that case, the Federal Circuit found that while the appealed claims were directed to an abstract idea (Step 2A), the district court erred in concluding that there were no factual questions underlying the § 101 inquiry. The Berkheimer court focused on certain language in claims that contained limitations "directed to [an] arguably unconventional inventive concept described in the specification." The court reversed the finding of ineligibility as the defendant offered no evidence that the claims in fact recited "well‑understood, routine, and conventional" techniques.