An inventive concept the claim does not require cannot carry the claim past step two

2026-09-21Fed. Cir.

Berkeley*IEOR d/b/a B*IEOR v. W.W. Grainger Inc., Nos. 2024-2353, 2025-1009 (Fed. Cir. Sept. 21, 2026) (nonprecedential), reversing a grant of summary judgment of eligibility by the United States District Court for the Northern District of Illinois, No. 17 C 7472

United States Patent Nos. 7,596,521, 7,882,137 and 8,612,316 claim a computer-implemented process for determining object-level profitability with a relational database management system: preparing information, establishing processing rules in the database, using the database system to independently calculate at least one marginal value of profit for each object being measured, calculating a fully absorbed profit adjustment value for each object, and combining the two. The district court granted the patentee summary judgment of eligibility, agreeing that the claims were directed to the abstract idea of calculating profitability but finding an inventive concept in the independent calculation step, which it read as an unconventional combination that improves the functioning of the computer itself by performing parallel computations in less time. The Federal Circuit reversed in an opinion by Judge Reyna for a panel that included Judge Dyk and Chief District Judge Bissoon sitting by designation, holding at step one that performing calculations based on collecting and analyzing information is an abstract idea and that performing them faster on a computer does not change that. At step two the panel held that if a claim is so broad that it can be practiced without the alleged inventive concept, so that the concept is not required by the claim, the claim cannot be significantly more than the abstract idea. The parties agreed that parallel processing was not a requirement of the claim, and that agreement decided the appeal.

What it changesThe technical improvement that wins an eligibility argument has to be a limitation of the claim rather than a property of the preferred embodiment. Machine learning applications routinely describe a faster training loop, a smaller model, a lower memory footprint or a parallelized inference path in the specification while claiming only the data flow, and this decision says the argument built on that improvement fails the moment the accused infringer shows the claim can be practiced without it. For anyone drafting now, the independent claim should recite the mechanism that produces the improvement in words specific enough that the claim cannot be practiced without it, and for anyone holding issued claims, an eligibility review of the portfolio should be run against what the claims require rather than against what the patents describe. The decision is nonprecedential, and it reversed a district court that had found the claims eligible on summary judgment.

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