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Berkheimer v. HP Inc.

Fact Issues May Preclude Summary Judgment of Subject-Matter Ineligibility

Berkheimer v. HP Inc., 2018 WL 774096 (Fed. Cir. Feb. 8, 2018) (MOORE, Taranto, Stoll) (N.D. Ill.: Lee) (4 of 5 stars)

Fed Cir affirms judgment of invalidity for indefiniteness as to some claims, vacates judgment of invalidity for subject matter ineligibility for others. Mr. Berkheimer’s claims related to processing and archiving of files in a digital asset management system. As to indefiniteness, the district court did not clearly err in finding that a person of ordinary skill would not have known the scope of the claim term “minimal redundancy,” as the term was “highly subjective.” Neither the specification nor file history helped define how much redundancy was permitted under the claim. Nor did the extrinsic record. As to subject-matter eligibility, Mr. Berkheimer did not waive his ability to argue on appeal for the separate patent eligibility of dependent claims because he never agreed to make claim 1 representative, and the opinion describes how Mr. Berkheimer’s trial briefing advanced some arguments relating only to dependent claims. Applying the framework of Alice, 134 S. Ct. 2347 (2014), at step one each of Mr. Berkheimer’s claims addressed an abstract idea involving parsing and comparison of data (some claims included other ideas, too). The opinion analogizes these ideas to claims found directed to abstract ideas in TLI Communications, 823 F.3d 607 (Fed. Cir. 2016), Content Extraction & Transmission, 776 F.3d 1343 (Fed. Cir. 2014), which merely used conventional computer components to implement abstract ideas. It rejects Mr. Berkheimer’s argument that his claims required compiling data from source code to object code; per Intellectual Ventures I, 850 F.3d 1307 (Fed. Cir. 2016), limiting the invention to a specific technological environment does not make it not directed to an abstract idea.

At Alice step two, however, the district court erred determining, on summary judgment, that some of Mr. Berkheimer’s claims involved only implementation of the abstract idea via well-known techniques. “The question of whether a claim element or combination of elements in well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Op. at 12. During summary judgment briefing, Mr. Berkheimer demonstrated a material fact question as to whether the claimed invention is well-understood, routine, and conventional. HP had apparently offered “no evidence” on this point. Id. at 13. “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Id. at 14. The opinion divides Mr. Berkheimer’s claims into two sets. For the first, it notes that Mr. Berkheimer had conceded that relevant technology (parsers) had existed for years before his patent, and the opinion reasons that application of parsers failed to transform Mr. Berkheimer’s abstract idea into a patentable invention. The second set of claims includes limitations that were at least “arguably unconventional,” according to the specification. The district court erred in finding no genuine issue of material fact as to “whether claims 4–7 perform well-understood, route, and conventional activities to a skilled artisan,” and summary judgment of subject matter ineligibility as to those claims is vacated.

KEYWORDS: INDEFINITENESS (YES); PATENT ELIGIBLE SUBJECT MATTER (NO); SUMMARY JUDGMENT