By Thomas Long, J.D.
The U.S. Court of Appeals for the Federal Circuit has affirmed a district court’s determination that eight claims of a patent that described methods for digitally processing and archiving files were invalid as indefinite, as well as the lower court’s determination on summary judgment that four claims were ineligible under 35 U.S.C. §101 as directed to an abstract idea, without additional inventive concepts making them patent eligible. Four dependent claims of the patent, however, could have passed Section 101 muster by describing methods to archive documents in an inventive manner that improved these aspects of the disclosed archival system. Genuine issues of material fact precluded summary judgment as to the eligibility of those claims. Therefore, the Federal Circuit vacated the district court’s finding of ineligibility with respect to those claims and remanded the case for further proceedings (Berkheimer v. HP Inc., February 8, 2018, Moore, K.).
Steven E. Berkheimer sued HP Inc., alleging infringement of U.S. Patent No. 7,447,713 ("the ’713 patent"), which described methods for digitally processing and archiving files. HP moved for summary judgment, arguing that the asserted claims of the ’713 patent covered patent-ineligible subject matter under 35 U.S.C §101. The federal district court in Chicago granted HP’s motion, concluding that claims 1–7 and 9 of the ’713 patent described steps that employed only "well-understood, routine, and conventional" computer functions, which did not contain an inventive concept sufficient to render the claims patent-eligible. In addition, in an earlier decision, the district court determined that claims 10–19 were invalid for indefiniteness under 35 U.S.C. §112. Berkheimer appealed both rulings.
Patent-in-suit. The ’713 patent’s system parsed files into multiple objects and tagged the objects to create relationships between them. These objects were analyzed and compared, either manually or automatically, to archived objects to determine whether variations existed based on predetermined standards and rules. This system eliminated redundant storage of common text and graphical elements, thereby improving system operating efficiency and reducing storage costs. The relationships between the archived objects allowed users to "carry out a one-to-many editing process of object-oriented data," in which a change to one object carried over to all archived documents containing the same object.
Indefiniteness. After the claim construction hearing, the district court decided that the term "archive exhibits minimal redundancy" in claim 10 was indefinite and rendered claim 10 and its dependents (claims 11–19) invalid. According to the district court, the intrinsic evidence left a person skilled in the relevant art with a "highly subjective" meaning of "minimal redundancy." This conclusion was based on a declaration of HP’s expert, Dr. Schonfeld, indicating that an ordinarily skilled artisan would not have known what the term meant in the context of claim 10. The Federal Circuit held that the district court’s factual finding based on Dr. Schonfeld’s declaration was not clearly erroneous, and it affirmed the indefiniteness determination for claims 10–19.
Noting that the specification used inconsistent terminology to describe the level of redundancy that the system achieved—variably referring to "minimizing," "eliminating," and "reducing" them—while the claim language did not require elimination of all redundancies from the archive, the appellate court stated that the specification contained no point of comparison for skilled artisans to determine the objective boundaries of "minimal" when the archive contained some redundancies. During prosecution, Berkheimer told the USPTO that claim 10 "desires to eliminate redundancy" but included the word "minimal" because eliminating all redundancy was unlikely. This, in the court’s view, did not explain how much redundancy was permitted. Therefore, the district court was correct to turn to extrinsic evidence in the form of Dr. Schonfeld’s opinion. Berkheimer proffered no expert evidence of his own. Accordingly, the Federal Circuit affirmed the determination that claims 10–19 were invalid as indefinite.
Patent eligibility. The appellate court reached mixed results, however, with respect to the district court’s Section 101 conclusions. The Federal Circuit affirmed the district court’s decision on summary judgment that claims 1–3 and 9 were ineligible, but it vacated the grant of summary judgment as to claims 4–7 and remanded for further proceedings. As a threshold matter, the court determined that Berkheimer had preserved his right to argue that dependent claims 4–7 were separately patent eligible, because Berkheimer never agreed in the district court proceedings to make claim 1 representative. Nonetheless, the district court decided to treat claim 1 as representative because it was the only asserted independent claim and Berkheimer had focused "all of his primary arguments" on claim 1. According to the Federal Circuit, neither rationale justified treating claim 1 as representative. A claim is not representative simply because it is an independent claim, and Berkheimer had advanced meaningful arguments about limitations found only in the dependent claims.
Turning to the merits, the Federal Circuit noted that claim 1 recited a method of archiving an item in a computer processing system comprising, among other things, presenting the item to a "parser" and evaluating the object structures in accordance with object structures previously stored in an archive. The parties did not challenge the district court’s constructions of "parser" as "a program that dissects and converts source code into object code," "parsing" as using such a program, and "evaluating the object structures in accordance with object structures previously stored in an archive" as "analyzing the plurality of multi-part object structures obtained by parsing and comparing it with object structures previously stored in the archive to determine if there is variance between the object and at least one of a predetermined standard and a user defined rule."
The district court concluded that claim 1 was directed to the abstract idea of "using a generic computer to collect, organize, compare, and present data for reconciliation prior to archiving." The Federal Circuit agreed with the characterization of claim 1 as directed to an abstract idea. The parsing and comparing steps were similar to claim steps found to be ineligible in other cases. Claim 4 added the abstract concept of storing, and claims 5–7 added the abstract concept of editing.
Next, addressing the question of "inventive concept," the Federal Circuit stated that the district court had erred in concluding that there were no underlying factual questions to the Section 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Berkheimer argued that the claimed combination improved computer functionality through the elimination of redundancy and the one-to-many editing feature, which provided inventive concepts. Claim 1, Berkheimer contended, recited an improvement to computer functionality and digital asset management systems. However, Berkheimer admitted that parsers and the functions they performed had existed for years before his patent. In the Federal Circuit’s view, the conventional limitations of claim 1, combined with limitations of analyzing and comparing data and reconciling differences between the data, failed to transform the abstract idea into a patent-eligible invention.
Claims 4–7, in contrast, contained limitations directed to the arguably unconventional inventive concept described in the specification. Claim 4 recited "storing a reconciled object structure in the archive without substantial redundancy." The specification stated that storing object structures in the archive without substantial redundancy improved system operating efficiency and reduced storage costs. Additionally, it stated that known asset management systems did not archive documents in this manner. Claim 5 depended from claim 4 and further recited "selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items." The specification stated that one-to-many editing substantially reduced the effort needed to update files. The Federal Circuit opined that this one-to-many functionality was more than editing data in a straightforward copy-and-paste fashion. Claims 6–7 depended from claim 5 and therefore contained the same limitations. Those claims recited a specific method of archiving that, according to the specification, provided benefits that improved computer functionality. The Federal Circuit concluded that, at this stage of the case, there was a genuine issue of material fact as to whether claims 4–7 archived documents in an inventive manner that improved these aspects of the disclosed archival system. Whether claims 4–7 performed well-understood, routine, and conventional activities to a skilled artisan is factual question precluding summary judgment with respect to those claims. Accordingly, the grant of summary judgment that claims 4–7 were ineligible was vacated, and the case was remanded for further exploration of the factual disputes.
The case is No. 2017-1437.
Attorneys: James P. Hanrath (Much Shelist, PC) for Steven E. Berkheimer. Jason C. White (Morgan, Lewis & Bockius LLP) for HP Inc., f/k/a Hewlett-Packard Co.
Companies: HP Inc., f/k/a Hewlett-Packard Co.
MainStory: TopStory Patent FedCirNews
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