The Federal Circuit in Berkheimer reiterated the well-established principles governing § 101 challenges regarding patent eligible subject matter. First, it confirmed that “patent eligibility is ultimately a question of law.” Second, it stated that the analysis may require considering “underlying factual questions.” Under Alice, one of the primary factual considerations is “whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent.”

Following Berkheimer, two parallel petitions for full en banc rehearing were filed, asking the Federal Circuit to answer variations of the following question: is the threshold determination of patent eligible subject matter under § 101 a question of law that can be settled in a motion to dismiss or motion for summary judgment, or do the underlying factual considerations preclude a judge from making such determination? The parallel petitions were both denied by the Federal Circuit, but the issue remains hotly debated. As a result, it is possible that petitions could be filed at the Supreme Court, asking it to resolve these questions.

Interestingly, multiple Federal Circuit judges who voted to deny rehearing indicated in their decisions that Congress should intervene to clarify this and other issues in the § 101 jurisprudence. The PTO has also weighed in, issuing updated guidance to its patent examiners on 19 April 2018, after the Berkheimer decision. The guidance instructs that “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 prevalent or in common use in the relevant industry,” and that such conclusion must be based upon a factual determination.