Federal Circuit Requires More Evidence Before Invalidating As Ineligible

In Berkheimer v. HP Inc., the US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a district court's grant of summary judgment of patent ineligibility under 35 U.S.C. § 101¹. The Federal Circuit made clear that patent ineligibility under Section 101 is, like indefiniteness, enablement and obviousness, a question of law that "may contain underlying factual issues," particularly as to whether the claims recite steps that are merely well-understood, routine and conventional for a person of ordinary skill in the art, and thus insufficient to transform an abstract idea into a patentable invention². By reaffirming that Section 101 is not a pure question of law, this decision could make it more difficult for district courts to grant summary judgment to invalidate claims as patent ineligible, and could further impact the US Patent and Trademark Office's (USPTO) burden during examination as well.