Berkheimer v. Hp Inc.

United States Court of Appeals
for the Federal Circuit
______________________

STEVEN E. BERKHEIMER,
Plaintiff-Appellant

v.

HP INC., FKA HEWLETT-PACKARD COMPANY,
Defendant-Appellee
______________________

2017-1437
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:12-cv-09023, Judge
John Z. Lee.
______________________

ON PETITION FOR REHEARING EN BANC
______________________

JAMES P. HANRATH, Much Shelist, PC, Chicago, IL,
filed a response to the petition for plaintiff-appellant.
Also represented by MICHAEL JOHN FEMAL; PAUL
SKIERMONT, Skiermont Derby LLP, Dallas, TX.

JASON C. WHITE, Morgan, Lewis & Bockius LLP,
Chicago, IL, filed a petition for rehearing en banc for
defendant-appellee. Also represented by NICHOLAS A.
RESTAURI; THOMAS R. DAVIS, DAVID JACK LEVY, WILLIAM
R. PETERSON, Houston, TX; ALLYSON NEWTON HO, Dallas,
TX; JULIE S. GOLDEMBERG, Philadelphia, PA.
2 BERKHEIMER v. HP INC.

MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, for amicus curiae T-Mobile USA, Inc.
Also represented by BRIAN BUROKER; ALEXANDER N.
HARRIS, San Francisco, CA; JOSH KREVITT, New York, NY.

DAVID EVAN FINKELSON, McGuireWoods LLP, Rich-
mond, VA, for amici curiae Sprint Spectrum LP, Cellco
Partnership. Also represented by MATTHEW ALLEN
FITZGERALD, BRIAN DAVID SCHMALZBACH.

DANIEL K. NAZER, Electronic Frontier Foundation,
San Francisco, CA, for amici curiae Electronic Frontier
Foundation, R Street Institute. Also represented by
CHARLES DUAN, R Street Institute, Washington, DC.

DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, for amici curiae The Internet Association, Computer
and Communications Industry Association, High Tech
Inventors Alliance. Also represented by PAUL ALESSIO
MEZZINA, JESSE D.H. SNYDER.
______________________

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
HUGHES, and STOLL, Circuit Judges.
MOORE, Circuit Judge, with whom DYK, O’MALLEY,
TARANTO, and STOLL, Circuit Judges, join, concurs in the
denial of the petition for rehearing en banc.
LOURIE, Circuit Judge, with whom NEWMAN, Circuit
Judge, joins, concurs in the denial of the petition for
rehearing en banc.
REYNA, Circuit Judge, dissents from the denial of the
petition for rehearing en banc.
PER CURIAM.
BERKHEIMER v. HP INC. 3

ORDER
Appellee HP Inc. filed a petition for rehearing en
banc. A response to the petition was invited by the court
and filed by Appellant Steven E. Berkheimer. Several
motions for leave to file amici curiae briefs were also filed
and granted. The petition, response, and amici curiae
briefs were first referred to the panel that heard the
appeal, and thereafter, to the circuit judges who are in
regular active service. A poll was requested, taken, and
failed.
Upon consideration thereof,
IT IS ORDERED THAT:
1) The petition for panel rehearing is denied.
2) The petition for rehearing en banc is denied.
3) The mandate of the court will issue on June 7,
2018.

FOR THE COURT

May 31, 2018 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
 United States Court of Appeals
for the Federal Circuit
______________________

STEVEN E. BERKHEIMER,
Plaintiff-Appellant

v.

HP INC., FKA HEWLETT-PACKARD COMPANY,
Defendant-Appellee
______________________

2017-1437
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:12-cv-09023, Judge
John Z. Lee.
______________________

MOORE, Circuit Judge, with whom DYK, O’MALLEY,
TARANTO, and STOLL, Circuit Judges, join, concurring in
the denial of the petition for rehearing en banc.
Berkheimer and Aatrix stand for the unremarkable
proposition that whether a claim element or combination
of elements would have been well-understood, routine,
and conventional to a skilled artisan in the relevant field
at a particular point in time is a question of fact. The
Supreme Court has described historical facts as “a recital
of external events.” Thompson v. Keohane, 516 U.S. 99,
110 (1995). In other words, facts relating to “who did
what, when or where, how or why.” U.S. Bank Nat’l Ass’n
ex rel. CWCapital Asset Mgmt. LLC v. The Village at
Lakeridge, LLC, 138 S. Ct. 960, 966 (2018).
2 BERKHEIMER v. HP INC.

Whether a claim element or combination of elements
would have been well-understood, routine, and conven-
tional to a skilled artisan in the relevant field at a partic-
ular point in time may require “weigh[ing] evidence,”
“mak[ing] credibility judgments,” and addressing “narrow
facts that utterly resist generalization.” Id. at 967 (quot-
ing Pierce v. Underwood, 487 U.S. 552, 561–62 (1988)).
The Supreme Court in Alice asked whether the claimed
activities were “previously known to the industry,” and in
Mayo asked whether they were “previously engaged in by
researchers in the field.” 1 Alice Corp. Pty. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2359 (2014); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012).
Indeed, the Court recognized that “in evaluating the
significance of additional steps, the § 101 patent-
eligibility inquiry and, say, the § 102 novelty inquiry
might sometimes overlap.” Mayo, 566 U.S. at 90. “[C]ase
law from the Supreme Court and this court has stated for
decades that anticipation is a factual question.” Microsoft
Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir.
2017). While the ultimate question of patent eligibility is
one of law, it is not surprising that it may contain under-
lying issues of fact. Every other type of validity challenge

1 It has been suggested that contrary to these pro-
nouncements by the Supreme Court, whether claim
limitations involve well-understood, routine, and conven-
tional activities should not be assessed from the perspec-
tive of a person of ordinary skill in the art. The
alternative is unclear, the reasonable judge? Such a
conclusion would be at odds with all patentability ques-
tions, which are assessed from the perspective of the
ordinarily skilled artisan. It would be bizarre, indeed, if
we assessed the question from the perspective of a jurist
because for much of the technology we encounter, very
little would be well-understood, routine, and conventional
to the jurist.
BERKHEIMER v. HP INC. 3

is either entirely factual (e.g., anticipation, written de-
scription, utility), a question of law with underlying facts
(e.g., obviousness, enablement), or a question of law that
may contain underlying facts (e.g., indefiniteness). 2
This question may require weighing evidence to de-
termine whether the additional limitations beyond the
abstract idea, natural phenomenon, or law of nature
would have been well-understood, routine, and conven-
tional to an ordinarily skilled artisan. Because the patent
challenger bears the burden of demonstrating that the
claims lack patent eligibility, 35 U.S.C. § 282(a), there
must be evidence supporting a finding that the additional
elements were well-understood, routine, and convention-
al. Relying on the specification alone may be appropriate
where, as in Mayo, the specification admits as much. 566
U.S. at 79; see also id. at 73–74. In Mayo, the Court
considered disclosures in the specification of the patent
about the claimed techniques being “routinely” used and
“well known in the art.” Id. at 73–74, 79. Based on these
disclosures, the Court held that “any additional steps
[beyond the law of nature] consist of well-understood,
routine, conventional activity already engaged in by the
scientific community” that “add nothing significant be-

2 It would be odd to suggest that § 101 is not an in-
validity challenge. It falls under Part II, Chapter 10 of
the Patent Act entitled Patentability of Inventions. It sits
alongside §§ 102, 103 and 112, which likewise articulate
validity concerns. Moreover, the single sentence in § 101
actually contains two patentability requirements: eligibil-
ity and utility. Both have long been treated by courts as
questions of validity. See, e.g., Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014); Juicy Whip, Inc. v. Orange Bang,
Inc., 185 F.3d 1364, 1367 (Fed. Cir. 1999).
4 BERKHEIMER v. HP INC.

yond the sum of their parts taken separately.” Id. at 79–
80. In a situation where the specification admits the
additional claim elements are well-understood, routine,
and conventional, it will be difficult, if not impossible, for
a patentee to show a genuine dispute. Cf. Pharmastem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362
(Fed. Cir. 2007) (stating that “[a]dmissions in the specifi-
cation regarding the prior art are binding on the patentee
for purposes of a later inquiry into obviousness”). 3
As this is a factual question, the normal procedural
standards for fact questions must apply, including the
rules in the Federal Rules of Civil Procedure applicable to
motions to dismiss or for summary judgment and the
standards in the Federal Rules of Evidence for admissions
and judicial notice. See SCA Hygiene Prods. Aktiebolag v.
First Quality Baby Prods., LLC, 137 S. Ct. 954, 964 (2017)
(stating that “the same common-law principles, methods
of statutory interpretation, and procedural rules as other
areas of civil litigation” also govern patent law). Though
we are a court of special jurisdiction, we are not free to
create specialized rules for patent law that contradict
well-established, general legal principles. See Teva, 135
S. Ct. at 840; Highmark Inc. v. Allcare Health Mgmt. Sys.,
Inc., 134 S. Ct. 1744, 1748–49 (2014); eBay Inc. v. Mer-
cExchange, LLC, 547 U.S. 388, 393–94 (2006).

3 When claim construction is limited to the intrinsic
evidence, we review it de novo. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015). However, con-
struing claims in light of the specification differs from
determining whether claim limitations recite activities
that were well-understood, routine, and conventional in
the relevant field at a particular point in time. The latter
is a question of historical fact, not a legal question of
claim scope.
BERKHEIMER v. HP INC. 5

If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berk-
heimer, there was such a genuine dispute for claims 4–7,
but not for claims 1–3 and 9. Berkheimer v. HP Inc., 881
F.3d 1360, 1370 (Fed. Cir. 2018). The specification de-
scribed the increases in efficiency and computer function-
ality that the invention, in claims 4–7, had over
conventional digital asset management systems. Id. at
1369 (citing U.S. Patent No. 7,447,713 at 1:24–27, 2:22–
26, 16:52–60). It further stated that “known asset man-
agement systems” did not contain the one-to-many claim
element and its advantages, ’713 patent at 2:23–26, and
that redundant document images “are the convention” in
“today’s digital asset management systems,” id. at 1:24–
27. While assertions in the patent will not always be
enough to create a genuine dispute of material fact, they
did so here. HP’s evidence focused almost exclusively on
the limitations of claim 1. See J.A. at 1054–62, Berkheim-
er, 881 F.3d 1360. Its only evidence that addressed the
additional limitations in claims 4–7 was the conclusory
statement from its expert’s declaration that the features
disclosed and claimed in the ’713 patent, including one-to-
many changes, “were known functions at the time the
application was filed” and “[w]hen combined into a single
computerized system, these known features perform[ed]
the exact same functions to yield predictable results.” Id.
at 1061. This evidence did not address whether the
additional limitations were well understood, routine, and
conventional. Based on this evidence, HP fell short of
establishing that it was entitled to summary judgment
that claims 4–7 are ineligible, a defense it bore the burden
of proving. 35 U.S.C. § 282(a). Indeed, beyond its expert’s
conclusory declaration, HP could point to no evidence in
the record contradicting the statements from the specifi-
cation. Applying the standard for summary judgment in
Rule 56, as we must, summary judgment had to be denied
as to claims 4–7. Because no genuine issue of fact existed
for claims 1–3 and 9, we affirmed the grant of summary
6 BERKHEIMER v. HP INC.

judgment that those claims were not eligible. As with
claims 1–3 and 9, when the evidence that aspects of the
invention are not well-understood, routine, and conven-
tional does not pertain to the invention as claimed, it will
not create a factual dispute as to these claims. See also
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1326 (Fed. Cir. 2016) (expert testimony about
problems solved by the invention does not create a genu-
ine dispute of material fact when “the claims do not
actually contain the ‘conflict-free requirement’”); Intellec-
tual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1321–22 (Fed. Cir. 2016) (when technological details or
particular features set forth in other claims that incorpo-
rate an inventive concept are not present in the claims at
issue they cannot create a question of fact as to these
claims).
If patent eligibility is challenged in a motion to dis-
miss for failure to state a claim pursuant to Rule 12(b)(6),
we must apply the well-settled Rule 12(b)(6) standard
which is consistently applied in every area of law. A
motion to dismiss for failure to state a claim must be
denied if “in the light most favorable to the plaintiff and
with every doubt resolved in the pleader’s favor—but
disregarding mere conclusory statements—the complaint
states any legally cognizable claim for relief.” 5B Charles
Alan Wright & Arthur R. Miller, Federal Practice and
Procedure § 1357 (3d ed. 2018). In the Eleventh Circuit,
the Rule 12(b)(6) standard requires accepting as true the
complaint’s factual allegations and construing them in the
light most favorable to the plaintiff. Aatrix Software, Inc.
v. Green Shades Software, Inc., 882 F.3d 1121, 1124 (Fed.
Cir. 2018) (citing Speaker v. U.S. Dep’t of Health & Hu-
man Servs. Ctrs. for Disease Control & Prevention, 623
F.3d 1371, 1379 (11th Cir. 2010)). The second amended
complaint in Aatrix included “concrete allegations . . . that
individual elements and the claimed combination are not
well-understood, routine, or conventional activity.” Id. at
BERKHEIMER v. HP INC. 7

1128. For example, it alleged that the patents “improve
the functioning of the data processing systems, comput-
ers, and other hardware” and explained in detail how the
invention achieves these improvements. J.A. at 454
¶ 107, Aatrix, 882 F.3d 1121; id. at 429 ¶¶ 38–39. “These
allegations suggest[ed] that the claimed invention is
directed to an improvement in the computer technology
itself and not directed to generic components performing
conventional activities.” Aatrix, 882 F.3d at 1127. As we
have previously held, “[i]n ruling on a 12(b)(6) motion, a
court need not ‘accept as true allegations that contradict
matters properly subject to judicial notice or by exhibit,’
such as the claims and the patent specification.” Secured
Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913
(Fed. Cir. 2017). But nothing in the limited record we
could consider at the Rule 12(b)(6) stage refuted these
allegations, so there was no legal basis to affirm the
dismissal of the complaint. See, e.g., Aatrix, 882 F.3d at
1128. These allegations “at a minimum raise[d] factual
disputes underlying the § 101 analysis, such as whether
the claim term ‘data file’ constitutes an inventive concept,
alone or in combination with other elements, sufficient to
survive an Alice/Mayo analysis at the Rule 12(b)(6) stage.”
Id. at 1126.
We cannot adopt a result-oriented approach to end
patent litigation at the Rule 12(b)(6) stage that would fail
to accept as true the complaint’s factual allegations and
construe them in the light most favorable to the plaintiff,
as settled law requires. The conclusion that the patent
claims in Aatrix survived the motion to dismiss is not a
holding that they are eligible. And the mere fact that
there were sufficient allegations in the pleading to state a
claim for patent infringement does not mean that the case
need go to trial.
There are many vehicles for early resolution of cases.
An accused infringer can move for summary judgment at
any time. In fact, under Rule 12(d), the Rule 12(b)(6)
8 BERKHEIMER v. HP INC.

motion could be converted into a summary judgment
motion and decided under the summary judgment stand-
ard rather than the harder Rule 12(b)(6) standard. Alter-
natively, the court can raise summary judgment sua
sponte under Rule 56(f)(3). Moreover, if the allegations in
the complaint about the invention as claimed ultimately
lack evidentiary support or if the case is exceptional,
district courts can award attorneys’ fees to the accused
infringer under either Rule 11 or § 285 to compensate the
accused infringer for any additional litigation costs it
incurs.
As stated in Berkheimer, “Nothing in this decision
should be viewed as casting doubt on the propriety” of our
previous cases resolving patent eligibility on motions to
dismiss or summary judgment. 881 F.3d at 1368. Indeed,
since Berkheimer and Aatrix, we have continued to uphold
decisions concluding that claims were not patent eligible
at these stages. See., e.g., SAP Am., Inc. v. InvestPic LLC,
— F.3d —, 2018 WL 2207254, at *6 (Fed. Cir. 2018)
(holding claims ineligible at Rule 12(c) stage); Voter
Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d
1376, 1385–86 (Fed. Cir. 2018) (same at Rule 12(b)(6)
stage); Maxon, LLC v. Funai Corp., Inc., — F. App’x —,
2018 WL 1719101, at *2 (Fed. Cir. 2018) (same); Intellec-
tual Ventures I LLC v. Symantec Corp., — F. App’x —,
2018 WL 1324863, at *1 (Fed. Cir. 2018) (same at sum-
mary judgment); Automated Tracking Sols., LLC v. The
Coca-Cola Co., — Fed. App’x —, 2018 WL 935455, at *5–6
(Fed. Cir. 2018) (same at Rule 12(c) stage).
Patent law does not protect claims to an “asserted ad-
vance in the realm of abstract ideas . . . no matter how
groundbreaking the advance.” SAP Am., 2018 WL
2207254, at *6. And in accordance with Alice, we have
repeatedly recognized the absence of a genuine dispute as
to eligibility for the many claims that have been defended
as involving an inventive concept based merely on the
idea of using existing computers or the Internet to carry
BERKHEIMER v. HP INC. 9

out conventional processes, with no alteration of computer
functionality. See, e.g., FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1096–97 (Fed. Cir 2016) (hold-
ing claims ineligible which “merely graft generic computer
components onto otherwise-ineligible method claims”);
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d
1363, 1370 (Fed. Cir. 2015) (“steps that do nothing more
than spell out what it means to ‘apply it on computer’
cannot confer eligibility”); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014) (“imple-
ment[ing] the abstract idea with routine, conventional
activity” and “invocation of the Internet” is not sufficient
to save otherwise abstract claims). The established
precedents have thus properly permitted pretrial resolu-
tion of many eligibility disputes.
Our decisions in Berkheimer and Aatrix are narrow:
to the extent it is at issue in the case, whether a claim
element or combination is well-understood, routine, and
conventional is a question of fact. This inquiry falls under
step two in the § 101 framework, in which we “consider
the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent
eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78–79). It is clear from Mayo that the
“inventive concept” cannot be the abstract idea itself, and
Berkheimer and Aatrix leave untouched the numerous
cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the ab-
stract idea. Mayo, 566 U.S. at 72–73 (requiring that “a
process that focuses upon the use of a natural law also
contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient
to ensure that the patent in practice amounts to signifi-
cantly more than a patent upon the natural law itself”
(emphasis added)). “[A] claim directed to a newly discov-
ered law of nature (or natural phenomenon or abstract
10 BERKHEIMER v. HP INC.

idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility; instead,
the application must provide something inventive, beyond
mere ‘well-understood, routine, conventional activity.’”
Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376
(Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 73). Whether
a claim element is well-understood, routine and conven-
tional to a skilled artisan in the relevant field at a partic-
ular time is a fact question, and Berkheimer and Aatrix
merely hold that it must be answered under the normal
procedural standards, including the Federal Rules of Civil
Procedure standards for motions to dismiss or summary
judgment and the Federal Rules of Evidence standards for
admissions and judicial notice.
For the foregoing reasons, we concur in the order
denying en banc review.
 United States Court of Appeals
for the Federal Circuit
______________________

STEVEN E. BERKHEIMER,
Plaintiff-Appellant

v.

HP INC., FKA HEWLETT-PACKARD COMPANY,
Defendant-Appellee
______________________

2017-1437
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:12-cv-09023, Judge
John Z. Lee.
______________________
LOURIE, Circuit Judge, with whom NEWMAN, Circuit
Judge, joins, concurring in the denial of the petition for
rehearing en banc.
I concur in the court’s declining to rehear this case en
banc. There is plausibility to the panel holding that there
are fact issues potentially involved in this case concerning
the abstract idea exception to patent eligibility. And the
panel, and the court, are bound to follow the script that
the Supreme Court has written for us in § 101 cases.
However, I believe the law needs clarification by
higher authority, perhaps by Congress, to work its way
out of what so many in the innovation field consider are
§ 101 problems. Individual cases, whether heard by this
court or the Supreme Court, are imperfect vehicles for
2 BERKHEIMER v. HP INC.

enunciating broad principles because they are limited to
the facts presented. Section 101 issues certainly require
attention beyond the power of this court.
We started from the statute that provides for patents
on “any new and useful process, machine, manufacture, or
composition of matter.” 35 U.S.C. § 101. The Supreme
Court put a gloss on this provision by excluding laws of
nature, natural phenomena, and abstract ideas. Le Roy v.
Tatham, 55 U.S. (14 How.) 156, 174–75 (1852) (“[A]
principle is not patentable. A principle, in the abstract, is
a fundamental truth; an original cause; a motive; these
cannot be patented, as no one can claim in either of them
an exclusive right.”); Diamond v. Chakrabarty, 447 U.S.
303, 309 (1980) (“The laws of nature, physical phenome-
na, and abstract ideas have been held not patentable.”).
So far, so good. Laws of nature (Ohm’s Law, Boyle’s Law,
the equivalence of matter and energy), properly con-
strued, should not be eligible for patent. Nor should
natural phenomena (lightning, earthquakes, rain, gravity,
sunlight) or natural products, per se (blood, brain, skin).
Of course, the latter are also unpatentable as lacking
novelty under § 102.
But it’s in the details that problems and uncertainties
have arisen. The Court held in Mayo Collaborative Ser-
vices v. Prometheus Laboratories, Inc., that the claim at
issue “set forth laws of nature” and was ineligible under
§ 101 as “a drafting effort designed to monopolize the law
of nature itself.” 566 U.S. 66, 77 (2012). That claim
recited “[a] method of optimizing therapeutic efficacy for
treatment of an immune-mediated gastrointestinal disor-
der, comprising” administering a drug and then measur-
ing the level of a metabolite of the drug. Id. at 74–75
(quoting U.S. Patent 6,355,623).
The Supreme Court whittled away at the § 101 stat-
ute in Mayo by analyzing abstract ideas and natural
phenomena with a two-step test, including looking for an
BERKHEIMER v. HP INC. 3

“inventive concept” at step two, thereby bringing aspects
of §§ 102 and 103 into the eligibility analysis. Id. at 72–
73, 90. The decision we now decide not to rehear en banc
holds that step two of the two-step analysis may involve
the type of fact-finding that underlies §§ 102 and 103,
further complicating what used to be a fairly simple
analysis of patent eligibility under § 101. We now are
interpreting what began, when it rarely arose, as a simple
§ 101 analysis, as a complicated multiple-step considera-
tion of inventiveness (“something more”), with the result
that an increasing amount of inventive research is no
longer subject to patent. For example, because the Mayo
analysis forecloses identifying any “inventive concept” in
the discovery of natural phenomena, we have held as
ineligible subject matter even meritorious inventions that
“combined and utilized man-made tools of biotechnology
in a way that revolutionized prenatal care.” Ariosa Diag-
nostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (internal quotation marks omitted).
The case before us involves the abstract idea excep-
tion to the statute. Abstract ideas indeed should not be
subject to patent. They are products of the mind, mental
steps, not capable of being controlled by others, regardless
what a statute or patent claim might say. Gottschalk v.
Benson, 409 U.S. 63, 67 (1972) (“[M]ental processes, and
abstract intellectual concepts are not patentable, as they
are the basic tools of scientific and technological work.”).
No one should be inhibited from thinking by a patent. See
Letter from Thomas Jefferson to Isaac McPherson (Aug.
13, 1813) (“[I]f nature has made any one thing less sus-
ceptible, than all others, of exclusive property, it is the
action of the thinking power called an Idea.”). Thus,
many brilliant and unconventional ideas must be beyond
patenting simply because they are “only” ideas, which
cannot be monopolized. Moreover such a patent would be
unenforceable. Who knows what people are thinking?
4 BERKHEIMER v. HP INC.

But why should there be a step two in an abstract
idea analysis at all? If a method is entirely abstract, is it
no less abstract because it contains an inventive step?
And, if a claim recites “something more,” an “inventive”
physical or technological step, it is not an abstract idea,
and can be examined under established patentability
provisions such as §§ 102 and 103. Step two’s prohibition
on identifying the something more from “computer func-
tions [that] are ‘well-understood, routine, conventional
activit[ies]’ previously known to the industry,” Alice Corp.
Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2359 (2014)
(alteration in original) (quoting Mayo, 566 U.S. at 73), is
essentially a §§ 102 and 103 inquiry. Section 101 does not
need a two-step analysis to determine whether an idea is
abstract.
I therefore believe that § 101 requires further authori-
tative treatment. Thinking further concerning § 101, but
beyond these cases, steps that utilize natural processes,
as all mechanical, chemical, and biological steps do,
should be patent-eligible, provided they meet the other
tests of the statute, including novelty, nonobviousness,
and written description. A claim to a natural process
itself should not be patentable, not least because it lacks
novelty, but also because natural processes should be
available to all. But claims to using such processes
should not be barred at the threshold of a patentability
analysis by being considered natural laws, as a method
that utilizes a natural law is not itself a natural law.
The Supreme Court also held in Association for Mo-
lecular Pathology v. Myriad Genetics, Inc., that claims to
isolated natural products were ineligible for claiming
“naturally occurring phenomena.” 569 U.S. 576, 590
(2013). The Court concluded that those claims “are not
patent eligible simply because they have been isolated
from the surrounding genetic material.” Id. at 596.
BERKHEIMER v. HP INC. 5

However, finding, isolating, and purifying such prod-
ucts are genuine acts of inventiveness, which should be
incentivized and rewarded by patents. We are all aware
of the need for new antibiotics because bacteria have
become resistant to our existing products. Nature, includ-
ing soil and plants, is a fertile possible source of new
antibiotics, but there will be much scientific work to be
done to find or discover, isolate, and purify any such
products before they can be useful to us. Industry should
not be deprived of the incentive to develop such products
that a patent creates. But, while they are part of the
same patent-eligibility problems we face, these specific
issues are not in the cases before us.
Accordingly, I concur in the decision of the court not
to rehear this § 101 case en banc. Even if it was decided
wrongly, which I doubt, it would not work us out of the
current § 101 dilemma. In fact, it digs the hole deeper by
further complicating the § 101 analysis. Resolution of
patent-eligibility issues requires higher intervention,
hopefully with ideas reflective of the best thinking that
can be brought to bear on the subject.
 United States Court of Appeals
for the Federal Circuit
______________________

STEVEN E. BERKHEIMER,
Plaintiff-Appellant

v.

HP INC., FKA HEWLETT-PACKARD COMPANY,
Defendant-Appellee
______________________

2017-1437
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:12-cv-09023, Judge
John Z. Lee.
______________________

REYNA, Circuit Judge, dissenting from the denial of the
petition for rehearing en banc.
The court’s vote to deny en banc review of Aatrix and
Berkheimer 1 is a declaration that nothing has changed in

1 This court’s opinion in Aatrix Software, Inc. v.
Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir.
2018), was issued six days after the release of the court’s
opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018). In Aatrix, Green Shades filed a Petition for Re-
hearing En Banc in which it raised two questions essen-
tially similar to the question that HP raises in its en banc
petition. As in Berkheimer, the court in Aatrix voted to
2 BERKHEIMER v. HP INC.

our precedent on patent subject matter eligibility under
35 U.S.C. § 101. We are encouraged to move along;
there’s nothing to see here. I disagree. I believe that, at
minimum, the two cases present questions of exceptional
importance that this court should address and not avoid. 2
Perhaps the single most consistent factor in this
court’s § 101 law has been our precedent that the § 101
inquiry is a question of law. Stated differently, there is no
precedent that the § 101 inquiry is a question of fact. The
Aatrix and Berkheimer decisions are contrary to that well-
established precedent.
Aatrix and Berkheimer alter the § 101 analysis in a
significant and fundamental manner by presenting patent
eligibility under § 101 as predominately a question of fact.
For example, in addressing Alice step two, the Aatrix and
Berkheimer panels raised and considered the same, exact
question of “whether the invention describes well-
understood, routine, and conventional activities.” Aatrix,
828 F.3d at 1129; see also Berkheimer, 881 F.3d at 1369.

deny Green Shades’s petition for rehearing en banc.
Given the similarity in the questions raised in the Aatrix
and Berkheimer petitions for rehearing en banc, I filed
identical dissents in both.
2 Federal Rule of Appellate Procedure 35 and our
Internal Operating Procedures provide that en banc
consideration is required to overrule a precedent of this
court. In addition, these rules establish reasons for which
en banc action should be taken, including the necessity of
securing or maintaining uniformity of decisions; involve-
ment of a question of exceptional importance; necessity of
overruling a prior holding of this or a predecessor court
expressed in an opinion having precedential status; or the
initiation, continuation, or resolution of a conflict with
another circuit. Based on these rules and procedures,
sufficient reason exists here for en banc review.
BERKHEIMER v. HP INC. 3

After declaring this to be a question of fact, the panels
found this question dispositive of the step two analysis.
This action has the effect of reducing the entire step two
inquiry into what is routine and conventional, rather than
determining if an inventive concept expressed in the
claims transforms the nature of the claims into a patent-
eligible application. Step two is thus divorced from the
claims.
Having made this profound change, the court offers no
meaningful guidance to the bar, the government, or the
public on how to proceed on these new grounds. 3 For

3 The reaction of the patent bar and intellectual
property community underscores the exceptional im-
portance of the questions presented by this court’s recent
decisions and their departure from precedent. On April
19, 2018, the USPTO issued a memorandum of changes in
examination procedure in light of Berkheimer. USPTO,
Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject
Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr.
19, 2018), available at https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF. The
memorandum highlights that, for the first time, this court
held that “whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the
patent is a factual determination.” Id. at 2 (citing Berk-
heimer, 881 F.3d at 1369). Accordingly, the memo “revis-
es” the MPEP and changes USPTO examination
procedure. Id. at 3–5. The memorandum provides that
now “an examiner should conclude that an element (or
combination of elements) represents well-understood,
routine, conventional activity only when the examiner
can readily conclude that the element(s) is widely preva-
lent or in common use in the relevant industry” in step
two of the Mayo/Alice test. Id. at 3. The USPTO is also
4 BERKHEIMER v. HP INC.

example, to what extent will discovery be allowed to prove
or disprove a fact that has been placed in contention?
Does this new factual inquiry extend to other aspects of
the § 101 inquiry, such as whether a claim is directed to
an abstract idea or a natural phenomenon? Can expert
opinion supplant the written description? Does the court
or jury determine this factual issue? What deference is
due to the fact finder? These and similar questions will

“seeking public comment on its subject matter eligibility
guidance, and particularly its guidance in the Berkheimer
memorandum to the Patent Examining Corps.” Request
for Comments on Determining Whether a Claim Element
Is Well-Understood, Routine, Conventional for Purposes
of Subject Matter Eligibility, 83 Fed. Reg. 17,536 (Apr. 20,
2018).
Further, district courts immediately started relying
on these decisions to deny summary judgment motions.
E.g., Vaporstream, Inc. v. Snap Inc., No. 2:17-CV-220,
2018 WL 1116530, at *6 (C.D. Cal. Feb. 27, 2018); Syca-
more IP Holdings LLC v. AT & T Corp., No. 2:16-CV-588,
2018 WL 936059, at *24 (E.D. Tex. Feb. 16, 2018). Com-
mentators have described the decisions as a “precedential
sea change,” in tension with prior cases resolving the
eligibility question on the pleadings as a question of law,
and conflating the eligibility analysis with that of obvi-
ousness. E.g., Dennis Crouch, Patent Eligibility: Eligibil-
ity Analysis and Its Underlying Facts: A Roadmap for
Surviving Dismissal on the Pleadings, PATENTLYO (Feb.
15, 2018), https://patentlyo.com/patent/2018/02/eligibility-
underlying-surviving.html; Dennis Crouch, Patent Eligi-
bility: Underlying Questions of Fact, PATENTLYO (Feb. 8,
2018), https://patentlyo.com/patent/2018/02/eligibility-
underlying-questions.html; Ryan Davis, Recent Patent-
Eligibility Cases Leave Unanswered Questions, LAW 360
(Mar. 12, 2018), https://www.law360.com/articles/
1020953?scroll=1o.
BERKHEIMER v. HP INC. 5

have to be addressed and resolved by the district courts.
Instead of creating a period of uncertainty with the expec-
tation of addressing these issues sometime in the future,
this court should address them now.
I.
The Supreme Court has characterized the § 101 pa-
tent-eligibility inquiry as a threshold test that precedes
the requirements described in §§ 102, 103, and 112. See
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
2355 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75 (2012); Bilski v. Kappos, 561
U.S. 593, 602 (2010). Consistent with this characteriza-
tion, this court has held that patent eligibility under § 101
is an issue of law. See, e.g., Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir.
2017); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1331 (Fed. Cir. 2015) (“We review questions con-
cerning compliance with the doctrinal requirements of
§ 101 of the Patent Act (and its constructions) as ques-
tions of law, without deference to the trial forum.”); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015) (“Patent eligibility under 35 U.S.C. § 101
is an issue of law reviewed de novo.”); Prometheus Labs.,
Inc. v. Mayo Collaborative Servs., 628 F.3d 1347, 1353
(Fed. Cir. 2010) (“Whether a patent claim is directed to
statutory subject matter is a question of law that we
review de novo.” (citation omitted)), rev’d on other
grounds, 566 U.S. 66 (2012); In re Bilski, 545 F.3d 943,
951 (Fed. Cir. 2008) (en banc) (“Whether a claim is drawn
to patent-eligible subject matter under § 101 is an issue of
law that we review de novo.”), aff’d in part, rev’d in part,
561 U.S. 593 (2010). Accordingly, this court has routinely
resolved patent-eligibility issues on the pleadings. See,
e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1097 (Fed. Cir. 2016); Content Extraction & Trans-
mission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1349 (Fed. Cir. 2014).
6 BERKHEIMER v. HP INC.

The two-step test for assessing subject matter eligibil-
ity under § 101 evolved from framework introduced by the
Supreme Court in Mayo and refined in Alice. First, we
determine whether “the claims at issue are directed to one
of those patent-ineligible concepts,” i.e., laws of nature,
natural phenomena, and abstract ideas. Alice, 134 S. Ct.
at 2355. If so, we proceed to step two, and consider ele-
ments of each claim both individually and “as an ordered
combination” to determine whether the additional ele-
ments “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo, 566 U.S. at 79).
This inquiry has been described as a search for other
elements or a combination of elements, occasionally
referred to as an “inventive concept,” sufficient to ensure
that the patent in practice amounts to significantly more
than a patent upon the natural law or abstract idea itself.
Mayo, 566 U.S. at 72–73. Importantly, step two of the
analysis is directed to the remaining elements of the
claim—“[w]hat else is there in the claims before us?”—
after the court determines that the claim is directed to
one of the patent-ineligible concepts. Mayo, 566 U.S. at
78 (emphasis added). The inventive concept determina-
tion is limited to the “additional elements” of the claim to
determine whether these additional elements transform
the nature of the claim into a patent-eligible application.
Alice, 134 S. Ct. at 2355; see also Mayo, 566 U.S. at 77;
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1377 (Fed. Cir. 2015).
The Court’s treatment of the “inventive concept”
search at step two makes clear that this inquiry is pre-
dominately a legal question focused on the claims. The
inventive concept cannot merely be alleged; rather, “the
claim ha[s] to supply a ‘new and useful’ application of the
idea in order to be patent eligible.” Alice, 134 S. Ct. at
2357 (emphasis added) (quoting Gottschalk v. Benson, 409
U.S. 63, 64 (1972)); Mayo, 566 U.S. at 80, 84 (discussing
Diamond v. Diehr, 450 U.S. 175 (1981), and concluding
BERKHEIMER v. HP INC. 7

that although the process claimed a basic mathematical
equation, the overall process was patent eligible “because
of the way the additional steps of the process integrated
the equation into the process as a whole”). Evidence of
prior art, the prosecution history, and allegations of
inventiveness are of no significance if these alleged inno-
vative concepts are not captured by the claims. See
Recognicorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) (“To save a patent at step two, an in-
ventive concept must be evident in the claims.” (emphasis
added)). Thus, both steps of Alice are legal questions that
the court must resolve by looking at the claims and writ-
ten description. See Content Extraction, 776 F.3d at 1347.
Contrary to this established body of law, the majority
opinion in Aatrix emphatically declares that the inventive
concept inquiry “cannot be answered adversely to the
patentee based on the sources properly considered on a
motion to dismiss, such as the complaint, the patent, and
materials subject to judicial notice.” Aatrix, 882 F.3d at
1128 (emphasis added). In other words, the Aatrix deci-
sion suggests that mere allegations of an inventive con-
cept are sufficient to preclude a finding of subject matter
eligibility at the Rule 12(b)(6) stage. Indeed, many of the
allegations regarding inventive concept in Aatrix’s pro-
posed second amended complaint—such as references
from the prior art and the success of the claimed inven-
tions 4—are wholly divorced from the claims themselves.

4 Aatrix’s new allegations in the Second Amended
Complaint included the following: the background and
development of the inventions of the Aatrix Patents;
specific allegations and diagrams spelling out the technol-
ogy of the Aatrix Patents; the prosecution history of the
patents with the relevant USPTO file wrappers attached
as exhibits; a large number of prior art references and
patentably distinct means and methods of creating,
8 BERKHEIMER v. HP INC.

Nor are the allegations tethered to the application of the
abstract idea at issue; the step two inquiry “asks
if . . . there is some inventive concept in the application of
the abstract idea” described in the claims—i.e., whether
some additional steps in the claimed process integrate the
claimed abstract idea into patentable application. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
Similarly, the majority in Aatrix contends that
“[t]here are concrete allegations in the second amended
complaint that individual elements and the claimed
combination are not well-understood, routine, or conven-
tional activity.” 882 F.3d at 1128. However, the fact that
steps or applications are deemed not “routine” or “conven-
tional” does not necessarily result in finding that the
subject matter has been rendered eligible under step two.
See SAP Am., Inc. v. Investpic LLC, No. 17-2081, slip op.
at 2 (Fed. Cir. May 15, 2018) (“We may assume [for
Rule 12(c) purposes] that the techniques claimed are

displaying and filling out forms on computers, such as
Aatrix’s own “monolithic software”; hundreds of search
results by the USPTO disclosing prior art in the field;
eleven patents or publications disclosing prior art and/or
patentably distinct means and methods cited by the
USPTO in the prosecution of the applications for the
Aatrix’s patents; several products for creating, designing
and filling out forms, allegedly distinct from Aatrix’s
patents, on sale before the date of invention; alternative
methods for creating, displaying and filling out forms
such as Superforms and the use of SDK’s to launch mono-
lithic software; and the allegedly many improvements,
objectives, and advantages over the prior art that the
inventions of Aatrix’s patents provide, including im-
provements in the functioning of the computer compo-
nents of the inventions. Aatrix, J.A. 407–09.
BERKHEIMER v. HP INC. 9

‘[g]roundbreaking, innovative, or even brilliant,’ but that
is not enough for eligibility.”).
Thus, Aatrix removes the inventive concept inquiry
from the claims and the specification, and instead places
it firmly in the realm of extrinsic evidence. This is a
change in our law, and is counter to guidance from the
Supreme Court and our own precedent. See Alice, 134 S.
Ct. at 2357 (“[W]e must examine the elements of the claim
to determine whether it contains an ‘inventive concept.’”
(emphasis added)); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101
inquiry must focus on the language of the Asserted
Claims themselves.”).
The consequences of this decision are staggering and
wholly unmoored from our precedent. Unlike prior art for
purposes of §§ 102 and 103, we have no established pa-
rameters or guidance for what evidence we can and
should consider for inventive concept purposes. And
although the § 101 inquiry has often been described as a
“threshold” issue, capable of early resolution, transform-
ing the predominately legal inquiry into a factual dispute
almost guarantees that § 101 will rarely be resolved early
in the case, and will instead be carried through to trial.
Before now, none of our decisions support the proposition
that a jury should decide whether a patent includes an
inventive concept sufficient to survive Alice step two. And
given our adoption of Aatrix and Berkheimer, I see no
principled reason that would restrain extending a factual
inquiry to step one of Alice.
The approach adopted in Aatrix also threatens to up-
set the Alice framework by letting the inventive concept
inquiry swallow the entirety of step two. Merely identify-
ing an inventive concept is insufficient; the additional
elements must also “‘transform the nature of the claim’
into a patent-eligible application.” Instead, by emphasiz-
ing whether the claimed elements are “not well-
10 BERKHEIMER v. HP INC.

understood, routine, or conventional,” the approach in
Aatrix reduces the § 101 inquiry into a novelty analysis.
This is improper. See Diamond, 450 U.S. at 188–91 (“The
question . . . of whether a particular invention is novel is
wholly apart from whether the invention falls into a
category of statutory subject matter.” (emphasis added));
Parker v. Flook, 437 U.S. 584, 588 (1978) (holding the
subject matter eligibility inquiry “does not involve the
familiar issues of novelty and obviousness that routinely
arise under §§ 102 and 103 when the validity of a patent
is challenged”). In the § 101 inquiry, issues of patentabil-
ity—i.e., novelty and obviousness under §§ 102 and 103—
are “of no relevance.” Diamond, 450 U.S. at 189. Allega-
tions that a claimed invention is not routine or conven-
tional, without more, cannot wholly replace the § 101
inquiry under Alice steps one and two. Although whether
the claimed elements or claimed combination are well-
understood, routine or conventional may be disputed, if
the inventive concept is not evident in the claims, the
court should not be precluded from holding the claims
patent ineligible under § 101 at the pleadings stage. If
such claimed improvements are absent from the face of
the asserted patent, which in this case they are, there is
no inventive concept sufficient to save an otherwise
ineligible patent.
II.
Unlike the novelty and obviousness inquiries under
§§ 102 and 103, which necessarily involve factual deter-
minations relating to the scope and content of prior art,
the § 101 analysis is analogous to contract interpretation,
in which a legal determination is made by reviewing the
face of the contract, and additional fact finding is war-
ranted only in some limited circumstances. See, e.g.,
Kamfar v. New World Rest. Grp., Inc., 347 F. Supp. 2d 38,
48–49 (S.D.N.Y. 2004) (“Under New York law, the initial
interpretation of a contract is a matter of law for the court
to decide. Where the agreement is unambiguous, a court
BERKHEIMER v. HP INC. 11

may not admit extrinsic evidence and interprets the plain
language of the agreement as a matter of law.”). A patent
is an agreement between the patent owner and the public
describing the patent owner’s intellectual property
rights. 5 The terms and conditions of the contract can be
analogized to the claims of the patent.
The fact that the parties disagree on the proper inter-
pretation of the contract does not render the contractual
language ambiguous. See Metro. Life Ins. Co. v. RJR
Nabisco, Inc., 906 F.2d 884, 889 (2d Cir. 1990) (“Language
whose meaning is otherwise plain is not ambiguous
merely because the parties urge different interpretations
in the litigation.”). Further, a party’s assertion of ambigu-

5 See, e.g., Oil States Energy Servs. v. Greene’s En-
ergy Grp., LLC, 138 S. Ct. 1365, 1382 (2018) (Gorsuch, J.,
dissenting); Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63
(1998) (“[T]he patent system represents a carefully craft-
ed bargain that encourages both the creation and the
public disclosure of new and useful advances in technolo-
gy, in return for an exclusive monopoly for a limited
period of time.”); George Ticknor Curtis, A Treatise on the
Law of Patents for Useful Inventions in the United States
Of America 1 (3d ed. 1867) (“A patent for a useful inven-
tion . . . is the grant by the government to the author of a
new and useful invention, of the exclusive right, for a
term of years, of practicing that invention. The considera-
tion . . . is the benefit to society from the invention . . . .”);
Srividhya Ragavan, Correlative Obligation in Patent Law:
The Role of Public Good in Defining the Limits of Patent
Exclusivity, 6 N.Y.U. J. Intell. P. & Ent. L. 47, 53 (“The
grant of monopoly rights is a contract with the govern-
ment in exchange for the patent holder providing a bene-
fit to society. . . . The contract necessarily balances
granted rights with imposed corresponding obligations of
the patent owner.”).
12 BERKHEIMER v. HP INC.

ity does not require the district court to allow additional
opportunities to find or present evidence if the court
considers the contract language and the evidence the
parties have presented and concludes that the language is
reasonably susceptible to only one interpretation.
Skilstaf, Inc. v. CVS Caremark Corp., 669 F.3d 1005,
1017–18 (9th Cir. 2012); see also M & G Polymers USA,
LLC v. Tackett, 135 S. Ct. 926, 938 (2015) (Ginsburg, J.,
concurring) (“When the intent of the parties is unambigu-
ously expressed in the contract, that expression controls,
and the court’s inquiry should proceed no further. But
when the contract is ambiguous, a court may consider
extrinsic evidence to determine the intentions of the
parties.”) (citing 11 Richard A. Lord, Williston on Con-
tracts §§ 30:2, 30:6, 30:7 (4th ed. 2012)).

Adopting the principles from contract interpretation,
a plaintiff’s allegations of inventiveness do not necessarily
render the claims of the patent (i.e., contract) “ambigu-
ous” to justify considering evidence outside of the patent.
The factual allegations of the inventiveness of the claimed
invention do not have to be accepted by the court if the
claims of the asserted patent do not reflect the alleged
innovative concepts and transform the nature of the claim
into a patent-eligible abstract idea. See, e.g., Ariosa, 788
F.3d at 1379 (“Sequenom argues that ‘before the ’540
patent, no one was using the plasma or serum of pregnant
mothers to amplify and detect paternally-inherited
cffDNA.’ This argument implies that the inventive con-
cept lies in the discovery of cffDNA in plasma or serum.
Even if so, this is not the invention claimed by the ’540
patent.” (citation omitted)).
The § 101 inquiry can similarly be analogized to claim
construction. When construing patent claims, the court
may rely on factual findings in some instances, but pre-
dominately construes the terms according to the claims
and specification, i.e., a purely legal determination. The
Supreme Court has said as much:
BERKHEIMER v. HP INC. 13

We recognize that a district court’s construction of
a patent claim, like a district court’s interpreta-
tion of a written instrument, often requires the
judge only to examine and to construe the docu-
ment’s words without requiring the judge to re-
solve any underlying factual disputes. As all
parties agree, when the district court reviews only
evidence intrinsic to the patent (the patent claims
and specifications, along with the patent’s prose-
cution history), the judge’s determination will
amount solely to a determination of law, and the
Court of Appeals will review that construction de
novo.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
840–41 (2015) (emphasis added).
A § 101 patent eligibility determination can be re-
solved without the need to look beyond the four corners of
the patent. Thus, the analysis becomes solely a question
of law for the court to properly decide. This does not
mean that there will never be factual allegations that
would preclude dismissal for ineligible subject matter, but
consistent with our precedent, such a determination can
be made based solely on the claims and written descrip-
tion. See, e.g., In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (refusing to engage in fact
finding in the § 101 inquiry when the specification suffi-
ciently described the claimed functions); see also William-
son v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir.
2015) (en banc) (“Regarding questions of claim construc-
tion . . . the district court’s determinations based on
evidence intrinsic to the patent as well as its ultimate
interpretations of the patent claims are legal questions
that we review de novo.”). In fact, “[i]n many cases . . .
evaluation of a patent claim’s subject matter eligibility
under § 101 can proceed even before a formal claim con-
struction.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1374 (Fed. Cir. 2016); see also Bancorp Servs.,
14 BERKHEIMER v. HP INC.

L.L.C. v. Sun life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1273 (Fed. Cir. 2012) (“[C]laim construction is not
an inviolable prerequisite to a validity determination
under § 101.”)
Accordingly, just as in claim construction and contract
interpretation, looking beyond the four corners of the
patent should only occur in exceptional circumstances. A
factual allegation or dispute should not automatically
take the determination out of the court’s hands; rather,
there needs to be justification for why additional evidence
must be considered—the default being a legal determina-
tion.
Whether a § 101 analysis is more akin to §§ 102 or
103 analysis—i.e., predominately factual—or contract
interpretation and claim construction—i.e., predominately
legal—is significant, for example, in the context of a Rule
12(b)(6) motion because these legal determinations can be
decided at an early stage of the case rather than having to
proceed to summary judgment or trial. See OIP Techs.,
788 F.3d at 1364–65 (Mayer, J., concurring) (“Addressing
35 U.S.C. § 101 at the outset not only conserves scarce
judicial resources and spares litigants the staggering
costs associated with discovery and protracted claim
construction litigation, it also works to stem the tide of
vexatious suits brought by the owners of vague and
overbroad business method patents. Accordingly, where,
as here, asserted claims are plainly directed to a patent
ineligible abstract idea, we have repeatedly sanctioned a
district court’s decision to dispose of them on the plead-
ings.”).
III.
The court’s inaction today has prevented us from ex-
ploring the important question raised in the en banc
petitions. The en banc process is intended to offer careful,
in-depth study by the full court of exceptionally important
questions, with the benefit of briefing and argument by
BERKHEIMER v. HP INC. 15

the parties, involvement of amici, and hearing the gov-
ernment’s views. I dissent from court’s vote to reject this
benefit, in particular where the Aatrix and Berkheimer
decisions upset established precedent and offer no guid-
ance to the many questions they raise.