The Federal Circuit's Berkheimer Ruling: The Necessity For Fact Finding Before Summary Judgment Under 35 U.S.C. § 101

On February 8, 2018, the Federal Circuit vacated portions of a decision from the U.S. District Court for the Northern District of Illinois in Berkheimer v. HP Inc., No. 2017-1437, 2018 U.S. App. LEXIS 3040 (Fed. Cir. Feb. 8, 2018). The Federal Circuit's decision is instructive for its determination that granting a motion for summary judgment is improper when the motion presents factual questions stemming from the patent specification. Id. at *22-23.

The patent-at-issue is entitled "System and Method for Archiving and Outputting Documents or Graphical Items." U.S. Patent No. 7,447,713. The patented system purports to parse files, identify objects and compare the newly identified objects to archived objects to determine if variations exist, thus eliminating "redundant storage of common text and graphical elements, which improves system operating efficiency and reduces storage costs." Berkheimer, at *2. Following the district court's Markman hearing, HP moved for