## Facts

- Steven E. Berkheimer owned U.S. Patent No. 7,447,713, which describes a digital asset management system that parses files into “objects,” tags and relates those objects, and compares them to archived objects under set rules.
- The patent describes reducing redundant storage and enabling one-to-many editing by propagating changes to shared objects across multiple stored documents, allegedly improving efficiency and lowering storage costs.
- Berkheimer sued HP Inc. for infringing claims 1–7 and 9–19 in federal district court.
- After claim construction, the district court held the term “archive exhibits minimal redundancy” (claim 10) indefinite, invalidating claim 10 and dependent claims 11–19.
- The district court later granted summary judgment that claims 1–7 and 9 were invalid as patent-ineligible subject matter under 35 U.S.C. § 101.
- Berkheimer appealed both the indefiniteness ruling and the § 101 summary judgment.

## Issues

1. Whether “archive exhibits minimal redundancy” renders claim 10 (and dependent claims) indefinite under 35 U.S.C. § 112 for lack of reasonably certain claim boundaries.
2. Whether claims 1–7 and 9 are directed to an abstract idea under Alice step one.
3. Whether, under Alice step two, the additional claim limitations recite an “inventive concept,” including whether “well-understood, routine, and conventional” activity is a factual question that can preclude summary judgment.

## Decision

- The Federal Circuit affirmed that claim 10 and claims 11–19 are invalid for indefiniteness.
- The Federal Circuit affirmed summary judgment that claims 1–3 and 9 are patent-ineligible under § 101.
- The Federal Circuit vacated summary judgment of ineligibility as to claims 4–7 and remanded for further proceedings.
- The court held that whether claimed elements are “well-understood, routine, and conventional” to a skilled artisan is a question of fact; summary judgment is improper where a genuine dispute exists on that point.

## Legal Principles

- A claim is indefinite under § 112 when the intrinsic record fails to provide objective boundaries that inform skilled artisans of the claim scope with reasonable certainty.
- Under Alice/Mayo, courts (1) determine whether claims are directed to an abstract idea and, if so, (2) assess whether additional limitations supply an inventive concept that transforms the abstract idea into a patent-eligible application.
- At Alice step two, the determination whether a limitation or ordered combination is “well-understood, routine, and conventional” is factual; the movant must support that conclusion with record evidence when seeking summary judgment.
- Eligibility may differ claim-by-claim; dependent claims with additional, specific limitations can require separate step-two analysis and may survive summary judgment even if the independent claim does not.

## Conclusion

The Federal Circuit upheld indefiniteness where “minimal redundancy” lacked objective boundaries, affirmed § 101 ineligibility for claims that merely performed abstract data comparison using generic computer functions, and remanded as to dependent claims whose asserted redundancy-reducing mechanisms raised a factual dispute over conventionality that could not be resolved on summary judgment.


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