Berkheimer v. HP Inc., No. 17-1437 (Fed. Cir. 2018)Annotate this Case
The 713 patent relates to digitally processing and archiving files in a digital asset management system that parses files into multiple objects and tags the objects to create relationships between them. These objects are analyzed and compared, manually or automatically, to archived objects to determine whether variations exist based on predetermined standards and rules. The system eliminates redundant storage of common text and graphical elements and improves system operating efficiency, reducing storage costs. Berkheimer sued HP, alleging infringement. Following a Markman hearing, the district court concluded that the term “archive exhibits minimal redundancy” in claim 10 is indefinite and renders claim 10 and its dependents invalid and granted HP summary judgment that claims 1–7 and 9 are patent ineligible under 35 U.S.C. 101. The Federal Circuit affirmed the determination that claims 10–19 are invalid as indefinite. Because claims 1–3 and 9 do not capture the purportedly inventive concepts, those claims are ineligible. The court did not decide whether claims 4–7 are patent eligible but held that summary judgment was improper, given the fact questions created by the specification’s disclosure. Claims 4–7 contain limitations directed to the arguably unconventional inventive concept described in the specification.