Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018)

In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as ineligible under 35 U.S.C. §101 and that other claims were invalid for indefiniteness.

On the issue of indefiniteness, the issue was whether the term “minimal redundancy” was reasonably clear. The District Court found that the intrinsic evidence “leaves a person skilled in the art with a highly subjective meaning of ‘minimal redundancy.’” The District Court, relying upon expert evidence, also found “that an ordinary skilled artisan would not have known what the term ‘minimal redundancy’ meant” in the claims.

The Federal Circuit affirmed the District Court’s indefiniteness findings, distinguishing many cases were terms of degree were held sufficiently definite. It noted that, in this case, the terminology was used inconsistently in the specification, and that it did not provide an objective boundary for the term “minimal.” The Federal Circuit also reviewed the prosecution history and concluded that it did not add clarity. Accordingly, it was proper for the District Court to consider and rely upon expert testimony. However, the Court was very clear that indefiniteness determinations are highly fact dependent, and that its finding was limited to the facts of this case.

On the issue of patent eligibility, the Court found certain claims ineligible, but reversed the district court and remanded for further fact finding with respect to other claims. The claims in this case relate to digitally processing and archiving files, and purport to reduce redundancy in the storing of data. Relying on its decisions in previous Section 101 cases, the Court held that the challenged claims were all directed to abstract ideas, such as parsing and comparing data, storing data, and editing data. Applying the Supreme Court’s two-step framework in Alice Corp. Pty. Ltd. v. CLS Bank Intern. 134 S. Ct. 2347 (2014), the Court proceeded to the second step of analyzing whether the claim limitations “involve more than performance of ‘well understood, routine, [and] conventional activities previously known to the industry.’”

The patent owner argued that the claims were not ineligible because they relate to improvements to computer technology, including increasing efficiency and computer functionality. The Court held that certain claims that covered only the abstract ideas of parsing and comparing data failed this test and were invalid.

However, with respect to other claims, the Court took the unusual step of remanding for further fact finding. The Federal Circuit acknowledged that “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of law.” The Court noted that Section 101 analysis, which is an issue of law, is often appropriate for early disposition, including at the motion to dismiss or summary judgment stages of a case. However, the Court noted that abstractness is based on certain underlying facts. And the Court held that there was a genuine dispute of material fact as to the claims having the added steps of storing and editing data, “perform well-understood, routine, and conventional activities to a skilled artisan,” or instead transform the abstract idea into a patent-eligible invention by providing benefits that improve computer functionality. With respect to these claims, the case was remanded for further fact finding.

As far as we are aware, this is the first case since Alice to be remanded for trial on the issue of patent eligibility.

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