Berkheimer v. HP Inc. - 881 F.3d 1360 (Fed. Cir. 2018)

Rule:

In patent litigation, indefiniteness determinations are reviewed de novo except for necessary subsidiary fact findings, which are reviewed for clear error. Under 35 U.S.C.S. § 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. 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. This standard mandates clarity, while recognizing that absolute precision is unattainable. 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.

Facts:

Certain claims in a patent involving a digital asset management system were invalid as indefinite under 35 U.S.C.S. § 112 because the language was not reasonably clear as to what level of redundancy in the archive was acceptable and extrinsic evidence supported that the patent did not inform a skilled artisan of the meaning of "archive exhibits minimal redundancy" with reasonable certainty. Appellant, Steven Berkheimer, sued HP Inc., appellee, in the Northern District of Illinois, alleging infringement of claims 1-7 and 9-19 of the '713 patent. The '713 patent relates to digitally 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 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. The district court granted the motion. Berkheimer then appeals. He also appealed that district court's decision in holding claims 10-19 of the '713 patent invalid for indefiniteness. 

Issue:

1. Did the court erred in granting that claims 1-7 and 9 are patent ineligible under 35 U.S.C. § 101

2. Did the district court erred in holding that claims 10-19 of '713 patent are invalid for indefiniteness. 

Answer:

1. Yes. 2. No.

Conclusion:

1. The Court affirmed district court’s decision in granting the summary of judgment that claims 1-3 and 9 of ‘713 patent were ineligible under 35 U.S.C. § 101 but did not decide that claims 4-7 are patent eligible. The Court only decided that on this record summary judgment was improper, given the fact questions created by the specification's disclosure. Summary of judgment on claims 4-7 were remanded for further proceedings. 

2. The Court held that not all terms of degree are indefinite. The Court only holds that the term "minimal redundancy" is indefinite in light of the evidence in this case. 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 of HP’s expert, Dr. Schonfeld, that the patent does not inform a skilled artisan of the meaning of "archive exhibits minimal redundancy" with reasonable certainty, it was not clear error for the district court to find that a skilled artisan would not have known the meaning of it.