Berkheimer v. Hewlett-Packard Co.
224 F. Supp. 3d 635
N.D. Ill.2016Background
- Plaintiff Berkheimer owns U.S. Patent No. 7,447,713, which claims computer-implemented methods for parsing items into multi-part object structures with searchable tags, comparing those structures to archived structures, and presenting them for manual reconciliation prior to archiving.
- Berkheimer asserted claims 1–7 and 9 (claim 1 is representative; others are dependent) against defendant Hewlett-Packard (HP). Claims 10–19 were previously held indefinite and not asserted.
- The court previously construed key claim terms: “parser” as a program converting source code to object code; “parsing” similarly; and “evaluating” as analyzing and comparing, with a specific construction of the evaluation step vis-à-vis archived structures and variance rules.
- HP moved for summary judgment that the asserted claims are invalid under 35 U.S.C. § 101 as directed to patent-ineligible subject matter; the Alice two-step framework was applied.
- The court determined the clear-and-convincing evidence standard does not apply to the § 101 legal inquiry presented and proceeded to analyze Alice Step 1 (abstract idea) and Step 2 (inventive concept).
- The court found the claims directed to the abstract idea of collecting/organizing/comparing/presenting data and lacking an inventive concept beyond conventional computer functions, and granted summary judgment for HP, invalidating claims 1–7 and 9 under § 101.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the asserted claims are directed to an "abstract idea" under Alice Step 1 | Berkheimer: claims improve computerized archiving (parser, searchable tags, multi-part object structures) and thus are not abstract | HP: claims recite conventional data collection, organization, comparison, and presentation — an abstract idea | Held: claims are directed to an abstract idea (collecting/organizing/comparing/presenting data) |
| Whether the claims contain an "inventive concept" under Alice Step 2 | Berkheimer: claims solve computer-rooted archival problems and are specific/innovative enough to overcome conventionality (reduced redundancy, one-to-many edits) | HP: claims use only well-understood, routine, conventional computer functions and generic implementation | Held: no inventive concept; claims recite generic computer implementation and lack specific algorithm/hardware; invalid under § 101 |
| Applicability of the clear-and-convincing evidentiary standard to § 101 inquiries | Berkheimer argued the standard should apply | HP argued the standard does not apply; § 101 is a question of law | Held: clear-and-convincing standard does not apply to this § 101 legal determination (court analyzed claims on the face) |
| Whether Enfish/DDR or other Fed. Cir. precedent requires a different result | Berkheimer relied on Enfish/DDR to say computer-functionality improvement makes claims patent eligible | HP: Enfish/DDR distinguishable because they involved specific, unconventional improvements; Berkheimer's claims are high-level and generic | Held: Enfish/DDR distinguishable; claims here are not the kind of specific technical improvements that render claims non-abstract |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes two-step test for patent-eligibility of abstract ideas)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (requires an inventive concept to transform an abstract idea into patent-eligible application)
- Bilski v. Kappos, 561 U.S. 593 (2010) (§ 101 excludes abstract ideas; machine-or-transformation test not dispositive alone)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (claims to data extraction/recognition/storage held abstract)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims to a specific nonconventional self-referential database structure held not directed to an abstract idea)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that solve a problem rooted in computer technology and that override conventional web behavior can supply inventive concept)