Grüneberg and Myers - Intellectual Property Law

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More support for the underlying factual issue in determining patent eligible subject matter

Fed. Cir. denies petition for rehearing en banc in Berkheimer v. HP and Aatrix Software, Inc. v. Green Shades Software. In a concurring denial Judges Moore, Dyk, O'Malley, Taranto and Stoll emphasized that whether an element would have  been well-understood, routine and conventional was a question of fact.  In a separate concurrence, Judges Lourie and Newman stated their belief that Congressional clarification is in order, questioning the need for a two-step analysis for determining whether a claim is directed to an abstract idea.  They note that while claims to natural processes should not be patentable based on novelty and for policy reasons, claims to using natural processes should not be barred at the threshold to patentability. Judge Reyna dissented noting that Aatrix and Berkheimer are a change 101 precedent and at a minimum present questions of exceptional importance deserving the benefit of briefing and argument by the parties, amici and the government.  

Richard Chinn