Section 101’s Power Wanes Post-Berkheimer

Managing Intellectual Property reached to Finnegan attorney Cory Bell for his thoughts on the impact of the Federal Circuit's Berkheimer v. HP decision.

The Berkheimer decision has changed how Section 101 is handled. While the decision can be used to support arguments that motions to dismiss should not be granted because there are factual determinations to be made, Cory notes that most of the cases he’s seen "cite Berkheimer for the premise that it doesn't really change the fact that they can still decide most of these cases if there's not a reasonable dispute, and that they can still decide 101 with summary judgments." This impacts patent prosecution because in order to ensure there is a "reasonable dispute," it's important to include very detailed facts in patent specifications. Cory said, "It’s really important to be very precise about what your improvement is, and tell that story in your application."