The Federal Circuit recently issued an important decision in Berkheimer v. HP Inc. (Fed. Cir. Feb. 8, 2018) (Before Moore, Taranto, and Stoll, J.). Giving hope to patentees who own computer-implemented inventions, the Federal Circuit ruled that it is not always appropriate to declare the broadest independent claim to be representative, and also held that questions of fact underlie patent eligibility determinations, which makes summary judgment inappropriate in at least some cases.
The case reached the Federal Circuit when appellant Steven E. Berkheimer appealed the district court’s summary judgment holding that claims 1-7 and 9 of U.S. Patent No. 7,447,713 (‘713 patent) were invalid as ineligible under 35 U.S.C. § 101 and Alice. Mr. Berkheimer also appealed the district court’s decision holding claims 10-19 of the ‘713 patent invalid for indefiniteness.
The Federal Circuit, in an opinion authored by Judge Moore, affirmed in part, vacated in part, and remanded for further proceedings. The Federal Circuit determined that claims 10-19 were invalid for indefiniteness, but that it was inappropriate for the district court to decide patent eligibility with respect to certain of the claims at issue. The Federal Circuit did agree that claims 1-3 and 9 related to an abstract idea and did not capture inventive concepts and, therefore, are ineligible. Notwithstanding, claims 4-7 were found to contain limitations directed to the arguably unconventional inventive concept described in the specification. Ultimately, Judge Moore wrote that whether the claims cover only conventional activities requires a factual determination, which can make it impossible to conclude claims are ineligible on summary judgment (i.e., summary judgment is only appropriate where there are no genuine issues of material fact).
Much attention has been paid to the part of the decision relating to patent eligibility. But because Berkheimer did not agree that all the claims rose and fell together, the district court erred in reaching its ruling based solely on a single representative claim.
The ‘713 Patent
The ‘713 patent relates to processing and archiving files in a digital asset management system. The system parses files into multiple objects and tags the objects to create relationships between them. The system eliminates redundant storage of common text and graphical elements, which improves operating efficiency and reduces storage costs.
Independent claim 1 recites:
1. A method of archiving an item in a computer processing system comprising: presenting the item to a parser; parsing the item into a plurality of multipart object structures wherein portions of the structures have searchable information tags associated therewith; evaluating the object structures in accordance with object structures previously stored in an archive; presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.
Representative Claim
The first issue of interest relates to the fact that Berkheimer did not agree that claim 1 was representative of all of the claims for purposes of patent eligibility evaluation. Nevertheless, the district court determined that Claim 1 was representative because it was the only independent claim presented.
Judge Moore explained that a claim is not representative merely because it is the only independent claim. There are certain situations where courts may treat a claim as representative. A claim may be viewed as representative, for example, “if the patentee does not present any meaningful argument for the distinctive significance of any claim limitations not found in the representative claim or if the parties agree to treat a claim as representative,” Judge Moore wrote. In this case, however, Berkheimer did make arguments specifically relating to the dependent claims and, therefore, he did not waive his right to challenge the patent eligibility of the dependent claims on appeal.
This issue alone makes Berkheimer v. HP very important for patent owners. Invalidity is supposed to require a claim-by-claim analysis, but all too frequently courts have select the broadest, weakest independent claim and labeled it as representative of all the claims at issue. When this happens, claims are routinely declared ineligible as covering an abstract idea and not having any inventive contribution. But if the patent owner makes arguments specifically relating to the patent eligibility of dependent claims, Berkheimer v. HP stands for the proposition that it is inappropriate to limit eligibility analysis to just an independent claim the court declares to be representative.
The clear take-away message here is that patent owners need to make patent eligibility arguments that take into account the limitations in all asserted claims, and not acquiesce to any particular claim being representative of all claims.
Tags: CAFC, Federal Circuit, patent, Patent eligibility, patents
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