STEVEN E. BERKHEIMER, Plaintiff-Appellant
HP INC., FKA HEWLETT-PACKARD COMPANY, Defendant-Appellee
from the United States District Court for the Northern
District of Illinois in No. 1:12-cv-09023, Judge John Z. Lee.
P. Hanrath, Much Shelist, PC, Chicago, IL, argued for
plaintiff-appellant. Also represented by Michael John Femal;
Paul Skiermont, Skiermont Derby LLP, Dallas, TX.
William R. Peterson, Morgan, Lewis & Bockius LLP,
Houston, TX, argued for defendant-appellee. Also represented
by Thomas R. Davis, David Jack Levy; Jason C. White, Nicholas
A. Restauri, Chicago, IL.
Moore, Taranto, and Stoll, Circuit Judges.
E. Berkheimer appeals the United States District Court for
the Northern District of Illinois' summary judgment
holding claims 1-7 and 9 of U.S. Patent No. 7, 447, 713
('713 patent) invalid as ineligible under 35 U.S.C.
§ 101. Mr. Berkheimer also appeals the district
court's decision holding claims 10-19 of the '713
patent invalid for indefiniteness. For the reasons discussed
below, we affirm-in-part, vacate-in-part, and remand for
'713 patent relates to digitally processing and archiving
files in a digital asset management system. '713 patent
at 1:11-12. The system parses files into multiple objects and
tags the objects to create relationships between them.
Id. at 1:13-18, 16:26-36. These objects are analyzed
and compared, either manually or automatically, to archived
objects to determine whether variations exist based on
predetermined standards and rules. Id. at 13:14-20,
16:37-51. This system eliminates redundant storage of common
text and graphical elements, which improves system operating
efficiency and reduces storage costs. Id. at
2:53-55, 16:52-54. The relationships between the objects
within the archive allow a user to "carry out a
one-to-many editing process of object-oriented data, "
in which a change to one object carries over to all archived
documents containing the same object. Id. at
Berkheimer sued HP Inc. in the Northern District of Illinois,
alleging infringement of claims 1-7 and 9-19 of the '713
patent. 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. HP moved for summary judgment
that claims 1-7 and 9 are patent ineligible under 35 U.S.C.
§ 101, and the district court granted the motion. Mr.
Berkheimer appeals. We have jurisdiction under 28 U.S.C.
review indefiniteness determinations de novo except for
necessary subsidiary fact findings, which we review for clear
error. Cox Commc'ns v. Sprint Commc'n Co.,
838 F.3d 1224, 1228 (Fed. Cir. 2016). Under 35 U.S.C. §
112, patent claims must "particularly point out and
distinctly claim the subject matter" regarded as the
invention. A lack of definiteness renders the claims invalid.
Nautilus, Inc. v. Biosig Instruments, Inc., 134
S.Ct. 2120, 2125 (2014). Claims, viewed in light of the
specification and prosecution history, must "inform
those skilled in the art about the scope of the invention
with reasonable certainty." Id. at 2129;
see Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) ("The claims, when read in
light of the specification and the prosecution history, must
provide objective boundaries for those of skill in the
art."). This standard "mandates clarity, while
recognizing that absolute precision is unattainable."
Nautilus, 134 S.Ct. at 2129. "Claim language
employing terms of degree has long been found definite where
it provided enough certainty to one of skill in the art when
read in the context of the invention." Interval
Licensing, 766 F.3d at 1370.
district court analyzed the term "archive exhibits
minimal redundancy" in claim 10 and determined that the
intrinsic evidence "leaves a person skilled in the art
with a highly subjective meaning of 'minimal
redundancy.'" Berkheimer v. Hewlett-Packard
Co., 2015 WL 4999954, at *9-10 (N.D. Ill. Aug. 21,
2015). It relied on the declaration of HP's expert, Dr.
Schonfeld, to find that an ordinarily skilled artisan would
not have known what the term "minimal redundancy"
meant in claim 10. Id. at *10. We hold that the
district court's subsidiary factual finding based on Dr.
Schonfeld's declaration was not clearly erroneous and
affirm its indefiniteness determination for claims 10-19.
first to the language of the claim to determine whether the
meaning of "minimal redundancy" is reasonably
clear. Claim 10 recites "a storage medium, and a set of
executable instructions for establishing an archive of
documents represented by linked object oriented elements
stored in the medium, wherein the archive exhibits minimal
redundancy with at least some elements linked to pluralities
of the elements." Claims 11-19 depend from claim 10 and
therefore include the same limitation. This claim language is
not reasonably clear as to what level of redundancy in the
archive is acceptable.
specification uses inconsistent terminology to describe the
level of redundancy that the system achieves. For example, it
describes "minimiz[ing] redundant objects, "
'713 patent at 16:50-51, "eliminating redundancy,
" id. at 16:52, and "reducing
redundancies, " id. at 15:18-19. The only
example included in the specification is an archive that
exhibits no redundancy. '713 patent at 13:5- 13. The
claim language, however, does not require elimination of all
redundancies from the archive. For example, the specification
discloses providing users with "user interfaces and
tools for examining and choosing the elimination of
document and document element redundancies."
Id. at 6:60-65 (emphasis added). Indeed, Mr.
Berkheimer acknowledges that "the invention attempts to
minimize redundancy but may not in all cases achieve absolute
[elimination of] redundancy." Appellant Br. at 64. The
specification contains no point of comparison for skilled
artisans to determine an objective boundary of
"minimal" when the archive includes some
redundancies. Sonix Tech. Co., Ltd. v. Publ'ns
Int'l, Ltd., 844 F.3d 1370, 1379 (Fed. Cir. 2017)
(holding that specific examples in the specification provided
"points of compari- son" that helped form an
objective standard of the claim's scope).
prosecution history does not add clarity. In response to an
indefiniteness rejection during prosecution, Mr. Berkheimer
explained that the claim "desires to eliminate
redundancy" but includes the word "minimal"
because "to eliminate all redundancy in the field of the
claimed invention is not likely." J.A. 656. This does
not explain how much redundancy is permitted.
light of the lack of objective boundary or specific examples
of what constitutes "minimal" in the claims,
specification, and prosecution history, the district court
properly considered and relied on extrinsic evidence. Relying
on the specification's lack of explanation and specific
examples of this term, HP's expert Dr. Schonfeld opined
that the patent does not inform a skilled artisan of the
meaning of "archive exhibits minimal redundancy"
with reasonable certainty. Mr. Berkheimer did not provide the
court with expert testimony of his own. While Dr.
Schonfeld's explanation for his opinion was brief, it was