Thursday, October 31, 2019

ED Texas rules in favor of US Automobile Association over Wells Fargo in denying SJ via 35 USC 101

A district court (ED Texas) determined, in denying a motion for summary judgment, that claims of U.S. Patent Nos. 8,977,571 (the “’571 Patent”) and 9,818,090, were not patent ineligible under 35 USC 101.

Yes, Berkheimer and Exergen were cited:

“[t]he question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in the relevant field is a
question of fact” that must be “proven by clear and convincing evidence.” Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).

Something is not necessarily well-understood, routine, and conventional simply because it
is disclosed in a prior art reference. Exergen Corp. v. KAZ USA, Inc., 725 F. App’x 959, 965–66
(Fed. Cir. 2018).
There are many obscure references that may qualify as prior art but are
insufficient to establish something is a “well-understood, routine, and conventional activity
previously engaged in by scientists who work in the field.” Mayo, 566 U.S. at 79. Accordingly,
determining “[w]hether a particular technology is well-understood, routine, and conventional goes
beyond” simply examining “what was simply known in the prior art.” Berkheimer, 881 F.3d at

Additionally, specific improvements described in a patent specification, “to the extent they
are captured in the claims, create a factual dispute regarding whether the invention describes well understood,
routine, and conventional activities.” Berkheimer, 881 F.3d at 1369. However,
“[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, conventional to a skilled artisan in the relevant field,
[patent eligibility] can be decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d
at 1368.


Alternatively and independently, the Court finds that even if the Asserted Claims were
directed at an abstract concept, a genuine dispute of fact would exist as to whether the claim
elements individually or as an ordered combination were “well-understood, routine, and
conventional to a skilled artisan in the relevant field.” Berkheimer, 881 F.3d at 1368. Such a factual
dispute precludes summary judgment.

See IPBiz post

The USPTO and the Berkheimer memo


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