StrikeForce Technologies, Inc. v. SecureAuth Corporation

In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), this Court explained a two-step test for determining whether a patent claim is directed to patent eligible subject matter under 35 U.S.C. § 101. First, “we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. at 2355. Second, if so, “we must examine the elements of the claim to determine whether it contains an ‘inventive concept,” an “element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. at 2355, 2357 (internal quotation marks omitted). In Berkheimer v. HP Inc., fka Hewlett-Packard Co., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer CAFC”), the panel stated, among other things, that the inquiry under step two of Alice, “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.” App., infra, 32a (emphasis added). This Court is currently considering whether to grant a petition for writ of certiorari in HP Inc., fka Hewlett-Packard Company, Petitioner v. Steven E. Berkheimer, Respondent, 18-415 (petition filed September 28, 2018) (“Berkheimer SCT”), to address the proper analysis under step two of Alice. The issues in this case are the same as in Berkheimer SCT. The question presented in this case is: Whether the Federal Circuit conducted the proper analysis under step two of Alice, as this Court will explain it, should certiorari be granted in Berkheimer SCT. (i)