Patent Riffs and Links: Alice-Issues of Fact in Berkheimer v. HP Inc.

Berkheimer v. HP Inc., (Fed. Cir. Feb. 8, 2018) (MOORE, Taranto, Stoll)


The Federal Circuit’s Berkheimer Ruling: The Necessity for Fact Finding Before Summary Judgment under 35 U.S.C. § 101 | HAUGPARTNERS
Procedural posture: “The patent-at-issue is entitled ‘System and Method for Archiving and Outputting Documents or Graphical Items. U.S. Patent No. 7,447,713. The patented system purports to parse files, identify objects and compare the newly identified objects to archived objects to determine if variations exist, thus eliminating ‘redundant storage of common text and graphical elements, which improves system operating efficiency and reduces storage costs. Berkheimer, at *2. Following the district court’s Markman hearing, HP moved for summary judgment on the grounds that Claim 10 is invalid as indefinite under 35 U.S.C. § 112 and that Claims 1-7 and 9 are patent-ineligible under 35 U.S.C. § 101. Id. HP’s motion for summary judgment was granted by the district court and an appeal was brought before the Federal Circuit.”

Ineligible under Alice – “Regarding the first step of Alice, the Federal Circuit held that each of the claims was directed to an abstract idea. Regarding the second step of Alice, the Federal Circuit held that the question of whether a claim element or combination of elements is well-understood, routine and conventional is a question of fact that must be proven by clear and convincing evidence. Here, there was a genuine issue of fact as to whether the claims recited well-understood, routine, and conventional activities to a skilled artisan.”

Berkheimer v. HP Inc. | FR
Step 1: “Applying the framework of Alice, 134 S. Ct. 2347 (2014), at step one each of Mr. Berkheimer’s claims addressed an abstract idea involving parsing and comparison of data (some claims included other ideas, too). The opinion analogizes these ideas to claims found directed to abstract ideas in TLI Communications, 823 F.3d 607 (Fed. Cir. 2016), Content Extraction & Transmission, 776 F.3d 1343 (Fed. Cir. 2014), which merely used conventional computer components to implement abstract ideas. It rejects Mr. Berkheimer’s argument that his claims required compiling data from source code to object code; per Intellectual Ventures I, 850 F.3d 1307 (Fed. Cir. 2016), limiting the invention to a specific technological environment does not make it not directed to an abstract idea.”

Berkheimer v. HP: Federal Circuit says patent eligibility a factual determination inappropriate for summary judgment | IPWATCHDOG
Summary judgement “‘Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts, Judge Moore wrote. ‘Patent eligibility has in many cases been resolved on motions to dismiss or summary judgment. Nothing in this decision should be viewed as casting doubt on the propriety of those cases. When 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 Federal Circuit held that the district court in this case erred in concluding that there are no factual questions underlying the question of law relating to patent eligibility under § 101.
‘Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination, Judge Moore wrote. ‘Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

Berkheimer v. HP Inc. (Fed. Cir. 2018) | PATENTDOCS.ORG
Issues of fact? “Furthermore, claim 1 ‘does not even require the storage of data after it is presented for manual reconciliation.’ On the other hand, claim 4 and claims 5-7 that depend therefrom recite ‘limitations directed to the arguably unconventional inventive concept described in the specification [, that] storing object structures in the archive without substantial redundancy improves system operating efficiency and reduces storage costs.’

Accordingly, the Court concluded that ‘there is at least a genuine issue of material fact in light of the specification regarding whether claims 4-7 archive documents in an inventive manner that improves these aspects of the disclosed archival system.’ Thus, ‘[w]hether claims 4-7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims.’ This does not mean that claims 4-7 are patent-eligible, only that the District Court’s summary judgment ruling was improper for these claims.”

Patent Eligibility: Underlying Questions of Fact | PATENTLYO
Tension? “The decision’s unsatisfying distinguishing point is that the court’s prior practice ‘demonstrate [that] not every Section 101 determination contains genuine diputes over the underlying facts material to the Section 101 inquiry. The court needs an en banc powwow to clarify the issues here.”