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Berkheimer v. HP Inc.

United States Court of Appeals, Federal Circuit

February 8, 2018

STEVEN E. BERKHEIMER, Plaintiff-Appellant

         Appeal from the United States District Court for the Northern District of Illinois in No. 1:12-cv-09023, Judge John Z. Lee.

          James 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.

          Before Moore, Taranto, and Stoll, Circuit Judges.

          Moore, Circuit Judge.

         Steven 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 further proceedings.


         The '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 15:65-16:2, 16:52-60.

         Mr. 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. § 1295(a)(1).


         I. Indefiniteness

         We 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.

         The 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.

         We look 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.

         The 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).

         The 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.

         In 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 not ...

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