In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452, and Berkheimer v. HP Inc., Appeal No. 2017-1452, the Federal Circuit denied petitions for rehearing en banc, concluding that Berkheimer and Aatrix are correct in concluding that whether a claim element or combination would have been well-understood, routine, and conventional is a question of fact, falling under step two of the Alice framework.
In two separate orders, the Federal Circuit denied petitions for rehearing en banc, declining to revisit its decisions in Aatrix Software and Berkheimer. Judge Moore, joined by four other judges, stated that “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.” This factual inquiry falls under step two of the Alice framework.
Judge Lourie, in a concurrence joined by Judge Newman, stated that § 101 does not need a two-step analysis to determine whether an idea is abstract and indicated that “the law needs clarification by higher authority, perhaps by Congress.”
Judge Reyna dissented from both denials. According to Judge Reyna, under Federal Circuit precedent, the § 101 inquiry is a question of law and the Aatrix and Berkheimer decisions are contrary to that precedent.