by Dennis Crouch
Important statement from the Federal Circuit today on the factual underpinnings of the eligibility analysis:
While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.
Berkheimer v. HP, Inc. (Fed. Cir. 2018) [Berkheimer]. The decision penned by Judge Moore partially vacates the lower court’s summary judgment of ineligibility. In particular, the court affirmed ineligibility of claims 1-3 and 9 of Steven Berkheimer’s U.S. Patent No. 7,447,713, but found that dependent claims 4-7 were not proven ineligible.
The short decision by Judge Moore and joined by Judges Taranto and Stoll is in substantial tension with prior treatment of eligibility analysis that has generally permitted resolution of the issue on the pleadings as a pure question of law. The decision’s unsatisfying distinguishing point is that the court’s prior practice “demonstrate [that] not every Section 101 determination contains genuine diputes over the underlying facts material to the Section 101 inquiry.” The court needs an en banc powwow to clarify the issues here.
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Claims at issue (1-3 and 9 are ineligible; Underlying facts required to determine whether 4-7 are ineligible).
1. A method of archiving an item in a computer processing system comprising:
presenting the item to a parser;
parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;
evaluating the object structures in accordance with object structures previously stored in an archive;
presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.
2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.
3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.
4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.
6. The method as in clam 5 which includes compiling an item to be output from the archive, wherein at least one object-type structure of the item has been edited during the one-to-many change and wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file formal.
7. The method as in claim 6 which includes compiling a plurality of items wherein the at least one object-type structure had been linked in the archive to members of the plurality.
9. The method as in claim 1 which includes forming object oriented data structures from the parsed items wherein the data structures include at least some of item properties, item property values, element properties and element property values.