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Berkheimer v. HP Inc. - 890 F.3d 1369 (Fed. Cir. 2018)


While the ultimate question of patent eligibility is one of law, it is not surprising that it may contain underlying issues of fact. Every other type of validity challenge is either entirely factual (e.g., anticipation, written description, utility), a question of law with underlying facts (e.g., obviousness, enablement), or a question of law that may contain underlying facts (e.g., indefiniteness).


Defendant HP Inc. filed a petition for rehearing en banc. The petition, response, and amici curiae briefs were first referred to the panel that heard the appeal, and thereafter, the petition was denied.


Are there valid grounds to support the rehearing petition of defendant?




The court held that whether a claim element is well-understood, routine and conventional to a skilled artisan in the relevant field at a particular time is a fact question, it must be answered under the normal procedural standards, including the Federal Rules of Civil Procedure standards for motions to dismiss or summary judgment and the Federal Rules of Evidence standards for admissions and judicial notice. The court affirmed the denial of the petition for rehearing.

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