Factual Evidence of Conventionality May Be Required for Section 101 Findings

In Berkheimer v. HP Inc. (Fed. Cir. Feb. 6, 2018), the Federal Circuit affirmed the district court’s finding that certain claims of U.S. Patent No. 7,447,713—directed to digital processing and archiving in a digital asset management system—were indefinite, and affirmed-in-part and vacated-in-part the grant of summary judgment that other claims were invalid under 35 U.S.C. § 101.

The Federal Circuit first affirmed that the claim term “archive exhibits minimal redundancy” is indefinite, rejecting Berkheimer’s argument that “‘the archive’ provides an objective baseline to measure what exhibits ‘minimal redundancy.’” The court explained that the issue is not what must exhibit minimal redundancy, but how much redundancy is “minimal,” and the specification lacked an objective boundary to determine this.

Turning to the § 101 inquiry, the court held that the appealed claims were directed to the abstract idea of “parsing and comparing data” under the first Alice step and that limiting the invention to a specific technological environment does “not make an abstract concept any less abstract.” The court then turned to the second Alice step, explaining that whether a technology is well-understood, routine, or conventional is a factual question beyond whether it was simply known in the prior art. The court found that some appealed claims failed to capture the purported inventive concepts and were patent ineligible. But the court also found there was a genuine issue of material fact as to whether other claims contained routine elements, vacated the district court’s holding as to these claims, and remanded for further proceedings.

Want to learn more? Click here for additional commentary about this case from Finnegan’s “Last Month at the Federal Circuit” podcast series.