by Dennis Crouch
In an important 2018 decision, the Federal Circuit sided partially with Berkheimer on a procedural eligibility grounds — finding disputed questions of material fact as to whether aspects of the claimed invention were “well-understood, routine, and conventional to a skilled artisan.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert denied 140 S.Ct. 911 (2020). The district court had invalidated claims 1-9 as ineligible and 10-19 as indefinite. The appellate panel vacated that decision as to claims 4-7 but otherwise affirmed.
Back on remand, the district court Judge John Lee has now ruled that the remaining claims are also indefinite under section 112p2. Steven E. Berkheimer, Pl. v. HP, Inc., 12-cv-9023, 2022 WL 910580 (N.D. Ill. Mar. 29, 2022). [Berkheimer_v._Hewlett-Packard__314]
The invention is a method of parsing computer files into “multi-part object structures” with “searchable information tags.” The system then uses “manual reconciliation” that involves looking for a measure of variance. The basic idea is that this system provides a searchable archive with reduced redundancy. Claims 10-19 require “minimal redundancy.” That term was not defined in the specification, and the district court found it indefinite. Berkheimer v. Hewlett-Packard Co., 2015 WL 4999954 (N.D. Ill. Aug. 21, 2015). The Federal Circuit then affirmed that decision.
The specification uses inconsistent terminology to describe the level of redundancy that the system achieves. For example, it describes “minimiz[ing] redundant objects,” “eliminating redundancy,” and “reducing redundancies.” The only example included in the specification is an archive that exhibits no redundancy. … The specification contains no point of comparison for skilled artisans to determine an objective boundary of “minimal” when the archive includes some redundancies.
The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.
Berkheimer (Fed. Cir. 2018). The remaining claims 4-7 do not use the term “minimal redundancy”, but instead require an archive “without substantial redundancy.” On remand, the district court found that term equally problematic and ultimately concluded that it failed delineate “the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
Without Substantial Redundancy: The district court identified the “substantial” wiggle-word as “facially ambiguous”–but concluded that ambiguity could be permissible someone of skill in the art had sufficient guideposts. Typically, those guides might come from examples within the specification. Here, however, the patent specification only includes an example of no-redundancy. And, during prosecution it appears that the examiner and Berkheimer treated “without substantial redundancy” and “minimal redundancy” as synonyms. Thus, the district court found that “substantial redundancy” lacked reasonable certainty for the same reasons as “minimal redundancy.”
Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.
“Judgment is entered in HP’s favor, and this case is terminated.”
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The district court invalidated the “minimal redundancy” claims as part of its 2015 claim construction order. At that time, neither party suggested that “without substantial redundancy” needed construction or was invalid. It was only on remand that HP raised the new argument. Berkheimer unsuccessfully argued waiver. The district court noted that its scheduling order did not preclude late-stage indefiniteness arguments.
Oddly, the district court went on to conclude that “the construction of ‘without substantial redundancy’ only became relevant after the Federal Circuit held that the synonymous term ‘minimal redundancy’ was invalid.” This statement is wrong. The issue was already relevant well before; and the Federal Circuit affirmed a prior invalidity finding. What is true: back in 2015, the parties were limited to only 10 claim construction issues and ‘without substantial redundancy’ didn’t make the top-ten list. The Federal Circuit decision pushed it up in the ranking.
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One result here is that Berkheimer will never get the chance to present the eligibility issues to the jury for their factual findings.