Berkheimer v. Hp Inc.
881 F.3d 1360
| Fed. Cir. | 2018Background
- The ’713 patent claims a digital asset management system that parses items into object-oriented elements, tags and links them, compares parsed objects to archived objects, and allows manual reconciliation where variances occur; the system aims to reduce redundant storage and enable one-to-many editing.
- Berkheimer sued HP for infringement of claims 1–7 and 9–19; the district court found claims 10–19 indefinite (term “archive exhibits minimal redundancy”) and granted HP summary judgment that claims 1–7 and 9 were § 101-ineligible.
- The district court construed key terms (e.g., “parser”) and held claim 1 representative for eligibility analysis, though it separately analyzed dependent claims.
- On appeal, Berkheimer challenged the § 101 rulings and defended the definiteness of claim 10; he argued dependent claims 4–7 recite inventive features (eliminating redundancy; one-to-many editing) that improve computer functionality.
- The Federal Circuit affirmed indefiniteness of claims 10–19, affirmed ineligibility of claims 1–3 and 9 under § 101, but vacated the summary judgment as to claims 4–7 and remanded because factual disputes exist about whether those claims recite unconventional improvements.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Definiteness of “archive exhibits minimal redundancy” (claims 10–19) | Term is understandable in light of the specification and archive context | Term is subjective/lacks objective boundary; skilled artisan wouldn’t know required level | Term indefinite; claims 10–19 invalid (affirmed) |
| § 101 eligibility of claim 1 (and claims 2–3,9) | Claim 1 is rooted in technology (parser) and improves digital asset management; not abstract | Claim 1 recites abstract idea (parsing/comparing/presenting data) using conventional computer functions | Claims 1–3 and 9 are directed to an abstract idea and lack an inventive concept; ineligible (affirmed) |
| § 101 eligibility of claims 4–7 (dependent claims) | These claims recite storing without substantial redundancy and one-to-many editing—purportedly unconventional improvements to computer functionality | HP: redundancy/efficiency are generic archival goals; features are conventional | Genuine factual dispute exists about whether claims 4–7 recite unconventional, non-routine improvements; summary judgment improper (vacated and remanded) |
| Whether § 101 factual issues preclude summary judgment | Berkheimer: factual questions (conventionality, inventive concept) require trial | HP: claimed functions were routine and conventional; summary judgment appropriate | Court: whether elements were well-understood/routine is a question of fact; where disputes exist, summary judgment inappropriate (applies to claims 4–7) |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (definiteness requires claims inform skilled artisan of scope with reasonable certainty)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (2014) (terms of degree can be definite when read in context)
- Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd., 844 F.3d 1370 (2016) (specification examples can provide objective baselines for terms of degree)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (2014) (claims directed to collecting/recognizing/storing data are abstract)
- In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (2016) (classifying and storing digital images using conventional components is abstract)
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (two-step framework for § 101: determine if directed to an abstract idea; if so, look for an inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (transformative inventive-concept requirement under § 101)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (2016) (claims directed to specific improvements in computer functionality can be patent eligible)
- Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (2017) (must show improvement to computer functionality to avoid abstractness)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (invalidity defenses based on facts must be proven by clear and convincing evidence)
- Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (2016) (§ 101 inquiries may contain underlying factual disputes)