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Berkheimer v. HP Inc.

United States Court of Appeals for the Federal Circuit

February 8, 2018, Decided



 [*1362]  [***1650]   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 [**2]  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,  [*1363]  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).


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881 F.3d 1360 *; 2018 U.S. App. LEXIS 3040 **; 125 U.S.P.Q.2D (BNA) 1649 ***; 2018 WL 774096

STEVEN E. BERKHEIMER, Plaintiff-Appellant v. HP INC., FKA HEWLETT-PACKARD COMPANY, Defendant-Appellee

Subsequent History: Rehearing denied by, Rehearing, en banc, denied by Berkheimer v. HP Inc., 890 F.3d 1369, 2018 U.S. App. LEXIS 14388 (Fed. Cir., May 31, 2018)

Later proceeding at HP Inc. v. Berkheimer, 139 S. Ct. 860, 202 L. Ed. 2d 565, 2019 U.S. LEXIS 48 (U.S., Jan. 7, 2019)

US Supreme Court certiorari denied by Hp Inc. v. Berkheimer, 2020 U.S. LEXIS 150 (U.S., Jan. 13, 2020)

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

Berkheimer v. Hewlett-Packard Co., 224 F. Supp. 3d 635, 2016 U.S. Dist. LEXIS 171200 (N.D. Ill., Dec. 12, 2016)



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