Berkheimer v. Hp Inc. , 881 F.3d 1360 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
STEVEN E. BERKHEIMER,
Plaintiff-Appellant
v.
HP INC., FKA HEWLETT-PACKARD COMPANY,
Defendant-Appellee
______________________
2017-1437
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:12-cv-09023, Judge
John Z. Lee.
______________________
Decided: February 8, 2018
______________________
JAMES P. HANRATH, Much Shelist, PC, Chicago, IL,
argued for plaintiff-appellant. Also represented by
MICHAEL JOHN FEMAL; PAUL SKIERMONT, Skiermont
Derby LLP, Dallas, TX.
WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP,
Houston, TX, argued for defendant-appellee. Also repre-
sented by THOMAS R. DAVIS, DAVID JACK LEVY; JASON C.
WHITE, NICHOLAS A. RESTAURI, Chicago, IL.
______________________
Before MOORE, TARANTO, and STOLL, Circuit Judges.
2 BERKHEIMER v. HP INC.
MOORE, Circuit Judge.
Steven E. Berkheimer appeals the United States Dis-
trict 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.
BACKGROUND
The ’713 patent relates to digitally processing and ar-
chiving 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 relationships be-
tween them. Id. at 1:13–18, 16:26–36. These objects are
analyzed and compared, either manually or automatical-
ly, 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, which
improves system operating efficiency and reduces storage
costs. Id. at 2:53–55, 16:52–54. The relationships be-
tween 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 ren-
ders 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
BERKHEIMER v. HP INC. 3
granted the motion. Mr. Berkheimer appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Indefiniteness
We review indefiniteness determinations de novo ex-
cept for necessary subsidiary fact findings, which we
review for clear error. Cox Commc’ns v. Sprint Commc’n
Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016). Under
35 U.S.C. § 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. Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2125 (2014). 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.” Id. at 2129; see Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed.
Cir. 2014) (“The claims, when read in light of the specifi-
cation and the prosecution history, must provide objective
boundaries for those of skill in the art.”). This standard
“mandates clarity, while recognizing that absolute preci-
sion is unattainable.” Nautilus, 134 S. Ct. at 2129.
“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 inven-
tion.” Interval Licensing, 766 F.3d at 1370.
The district court analyzed the term “archive exhibits
minimal redundancy” in claim 10 and determined that
the intrinsic evidence “leaves a person skilled in the art
with a highly subjective meaning of ‘minimal redundan-
cy.’” Berkheimer v. Hewlett-Packard Co., 2015 WL
4999954, at *9–10 (N.D. Ill. Aug. 21, 2015). It relied on
the declaration of HP’s expert, Dr. Schonfeld, to find that
an ordinarily skilled artisan would not have known what
the term “minimal redundancy” meant in claim 10. Id. at
*10. We hold that the district court’s subsidiary factual
4 BERKHEIMER v. HP INC.
finding based on Dr. Schonfeld’s declaration was not
clearly erroneous and affirm its indefiniteness determina-
tion for claims 10–19.
We look first to the language of the claim to determine
whether the meaning of “minimal redundancy” is reason-
ably clear. Claim 10 recites “a storage medium, and a set
of executable instructions for establishing an archive of
documents represented by linked object oriented elements
stored in the medium, wherein the archive exhibits mini-
mal redundancy with at least some elements linked to
pluralities of the elements.” Claims 11–19 depend from
claim 10 and therefore include the same limitation. This
claim language is not reasonably clear as to what level of
redundancy in the archive is acceptable.
The specification uses inconsistent terminology to de-
scribe the level of redundancy that the system achieves.
For example, it describes “minimiz[ing] redundant ob-
jects,” ’713 patent at 16:50–51, “eliminating redundancy,”
id. at 16:52, and “reducing redundancies,” id. at 15:18–19.
The only example included in the specification is an
archive that exhibits no redundancy. ’713 patent at 13:5–
13. The claim language, however, does not require elimi-
nation of all redundancies from the archive. For example,
the specification discloses providing users with “user
interfaces and tools for examining and choosing the
elimination of document and document element redun-
dancies.” Id. at 6:60–65 (emphasis added). Indeed,
Mr. Berkheimer acknowledges that “the invention at-
tempts to minimize redundancy but may not in all cases
achieve absolute [elimination of] redundancy.” Appellant
Br. at 64. The specification contains no point of compari-
son for skilled artisans to determine an objective bounda-
ry of “minimal” when the archive includes some
redundancies. Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd.,
844 F.3d 1370, 1379 (Fed. Cir. 2017) (holding that specific
examples in the specification provided “points of compari-
BERKHEIMER v. HP INC. 5
son” that helped form an objective standard of the claim’s
scope).
The prosecution history does not add clarity. In re-
sponse 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.” J.A. 656. This does not
explain how much redundancy is permitted.
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.
Relying on the specification’s lack of explanation and
specific examples of this term, HP’s expert Dr. Schonfeld
opined that the patent does not inform a skilled artisan of
the meaning of “archive exhibits minimal redundancy”
with reasonable certainty. Mr. Berkheimer did not pro-
vide the court with expert testimony of his own. While
Dr. Schonfeld’s explanation for his opinion was brief, it
was not clear error for the district court to find that a
skilled artisan would not have known the meaning of
“minimal redundancy” with reasonable certainty.
Mr. Berkheimer’s argument that “the archive” pro-
vides an objective baseline to measure what exhibits
“minimal redundancy” misses the point. He is correct
that it is “the archive” that must exhibit “minimal redun-
dancy,” but the issue is not what must exhibit minimal
redundancy, but rather how much is minimal.
Mr. Berkheimer’s only arguments on this point are that
terms of degree are not required to have an objective
boundary and a contrary holding would invalidate a large
swath of patents relying on terms of degree such as “min-
imal” or “substantial.” Our case law is clear that the
objective boundaries requirement applies to terms of
degree. In Sonix, we held that the term “visually negligi-
6 BERKHEIMER v. HP INC.
ble” had an objective baseline to interpret the claims.
844 F.3d at 1378. In Interval Licensing, we held that the
phrase “unobtrusive manner” lacked objective boundaries.
766 F.3d at 1371. We do not hold that all terms of degree
are indefinite. We only hold that the term “minimal
redundancy” is indefinite in light of the evidence in this
case.
Accordingly, we affirm the district court’s determina-
tion that claims 10–19 are invalid as indefinite.
II. Patent Eligibility
In patent appeals, we apply the law of the regional
circuit, here the Seventh Circuit, to issues not unique to
patent law. AbbVie Deutschland GmbH & Co., KG v.
Janssen Biotech, Inc., 759 F.3d 1285, 1295 (Fed. Cir.
2014). The Seventh Circuit reviews a grant of summary
judgment de novo, drawing all reasonable inferences in
the light most favorable to the non-movant. Arnett v.
Webster, 658 F.3d 742, 757 (7th Cir. 2011). Summary
judgment is appropriate when “there is no genuine dis-
pute as to any material fact and the movant is entitled to
judgment as a matter of law.” FED. R. CIV. P. 56(a).
Patent eligibility under 35 U.S.C. § 101 is ultimately an
issue of law we review de novo. Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed.
Cir. 2017). The patent eligibility inquiry may contain
underlying issues of fact. Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir.
2016).
First, we address whether Mr. Berkheimer waived his
ability to argue that the dependent claims are separately
patent eligible. Courts may treat a claim as representa-
tive in certain situations, such as if the patentee does not
present any meaningful argument for the distinctive
significance of any claim limitations not found in the
representative claim or if the parties agree to treat a
claim as representative. Elec. Power Grp., LLC v. Alstom
BERKHEIMER v. HP INC. 7
S.A., 830 F.3d 1350, 1352 (Fed. Cir. 2016); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 &
n.9 (Fed. Cir. 2016). Because Mr. Berkheimer maintained
that limitations included in dependent claims 4–7 bear on
patent eligibility and never agreed to make claim 1 repre-
sentative, we hold that arguments going specifically to
claims 4–7 are properly preserved on appeal.
Mr. Berkheimer never agreed to make claim 1 repre-
sentative. In his opposition brief to HP’s motion for
summary judgment, he argued that claim 1 is not repre-
sentative of the limitations found in the dependent
claims. J.A. 1280. In particular, he argued that limita-
tions in claim 5 drawn to effecting a one-to-many change
add inventive concepts. Id. Other portions of his brief
below argued that reducing redundancy and enabling one-
to-many editing are patent eligible concepts. See, e.g.,
J.A. 1278 (“The innovative aspects of the claims improve
computerized digital asset and content management
systems by enabling control of object and object relation-
ship integrity, reducing redundancy, [and] linking objects
to enable one to many editing . . . . Such improvements to
computer functionality are precisely the kind of improve-
ments that have been found patent eligible under Alice.”
(internal citations omitted)). Because claim 1 does not
recite reducing redundancy or enabling one-to-many
editing, we interpret these arguments as applying to
dependent claims 4–7, which include these limitations.
Mr. Berkheimer makes these same arguments to us on
appeal.
The district court stated that it was treating claim 1
as representative because claim 1 is the only asserted
independent claim and Mr. Berkheimer focused “all of his
8 BERKHEIMER v. HP INC.
primary arguments” on claim 1. 1 Berkheimer v. Hewlett-
Packard Co., 224 F. Supp. 3d 635, 643 n.6 (N.D. Ill. Dec.
12, 2016). Neither rationale justifies treating claim 1 as
representative. A claim is not representative simply
because it is an independent claim. Indeed,
Mr. Berkheimer advanced meaningful arguments regard-
ing limitations found only in the dependent claims. In
acknowledging that Mr. Berkheimer focused his “primary
arguments” on claim 1, the district court necessarily
recognized that he raised arguments regarding the de-
pendent claims. Thus, Mr. Berkheimer’s separate argu-
ments regarding claims 4–7 are not waived.
Turning to the merits of the § 101 inquiry, anyone
who “invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof” may obtain a pa-
tent. 35 U.S.C. § 101. Because patent protection does not
extend to claims that monopolize the “building blocks of
human ingenuity,” claims directed to laws of nature,
natural phenomena, and abstract ideas are not patent
eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
2347, 2354 (2014). The Supreme Court instructs courts to
distinguish between claims that claim patent ineligible
subject matter and those that “integrate the building
blocks into something more.” Id. “First, we determine
whether the claims at issue are directed to” a patent-
ineligible concept. Id. at 2355. If so, “we consider the
elements of each claim both individually and ‘as an or-
dered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo Collaborative
1 Though the district court stated it was treating
claim 1 as representative, it separately analyzed the
dependent claims.
BERKHEIMER v. HP INC. 9
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79
(2012)).
Independent claim 1 recites:
1. A method of archiving an item in a computer
processing system comprising:
presenting the item to a parser;
parsing the item into a plurality of multi-
part object structures wherein portions of
the structures have searchable infor-
mation tags associated therewith;
evaluating the object structures in accord-
ance with object structures previously
stored in an archive;
presenting an evaluated object structure
for manual reconciliation at least where
there is a predetermined variance between
the object and at least one of a predeter-
mined standard and a user defined rule.
The district court construed “parser” as “a program
that dissects and converts source code into object code”
and “parsing” as using such a program. J.A. 47. It con-
strued “evaluating the object structures in accordance
with object structures previously stored in an archive” as
“analyzing the plurality of multi-part object structures
obtained by parsing and comparing it with object struc-
tures previously stored in the archive to determine if
there is variance between the object and at least one of a
predetermined standard and a user defined rule.” Id.
These constructions are not challenged on appeal.
At Alice step one, we must “determine whether the
claims at issue are directed to a patent-ineligible concept.”
Alice, 134 S. Ct. at 2355. The district court held claim 1 is
directed to the abstract idea of “using a generic computer
to collect, organize, compare, and present data for recon-
10 BERKHEIMER v. HP INC.
ciliation prior to archiving.” Berkheimer, 224 F. Supp. 3d
at 644. Mr. Berkheimer argues the district court charac-
terized the invention too broadly and simplistically,
ignoring the core features of the claims. We hold that
claims 1–3 and 9 are directed to the abstract idea of
parsing and comparing data; claim 4 is directed to the
abstract idea of parsing, comparing, and storing data; and
claims 5–7 are directed to the abstract idea of parsing,
comparing, storing, and editing data.
These claims are similar to claims we held directed to
an abstract idea in prior cases. See, e.g., In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014). In Content Extraction, the claims at issue general-
ly recited “a method of 1) extracting data from hard copy
documents using an automated digitizing unit such as a
scanner, 2) recognizing specific information from the
extracted data, and 3) storing that information in a
memory.” 776 F.3d at 1345. We held those claims were
directed to the abstract idea of “1) collecting data, 2)
recognizing certain data within the collected data set, and
3) storing that recognized data in a memory.” Id. at 1347.
Similarly, in TLI, the claims recited a “method for record-
ing and administering digital images,” which involved
“recording images using a digital pick up unit in a tele-
phone unit,” digitally storing them, transmitting the
digital images and classification information to a server,
and storing the digital images in the server based on the
classification information. 823 F.3d at 610. We held the
claim at issue used only conventional computer compo-
nents to implement the abstract idea of “classifying and
storing digital images in an organized manner.” Id. at
613. Here, the specification explains that the parser
“determines and extracts components of the standardized
document or item representation” and reassembles the
components “into composite output files.” ’713 patent at
BERKHEIMER v. HP INC. 11
3:61–4:17. Even though the parser separates the docu-
ments or items into smaller components than the claims
determined to be abstract in Content Extraction and TLI,
the concept is the same. The parsing and comparing of
claims 1–3 and 9 are similar to the collecting and recog-
nizing of Content Extraction, 776 F.3d at 1347, and the
classifying in an organized manner of TLI, 823 F.3d at
613. Claim 4 adds the abstract concept of storing, and
claims 5–7 add the abstract concept of editing.
Mr. Berkheimer argues that the claims are not ab-
stract because the “parsing” limitation roots the claims in
technology and transforms the data structure from source
code to object code. Limiting the invention to a technolog-
ical environment does “not make an abstract concept any
less abstract under step one.” Intellectual Ventures I,
850 F.3d at 1340. That the parser transforms data from
source to object code does not demonstrate non-
abstractness without evidence that this transformation
improves computer functionality in some way. See Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed.
Cir. 2017) (“[W]e must . . . ask whether the claims are
directed to an improvement to computer functionality
versus being directed to an abstract idea.” (internal
quotations omitted)); Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“[T]he first step
in the Alice inquiry in this case asks whether the focus of
the claims [was] on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are
invoked merely as a tool.”). No such evidence exists on
this record. Indeed, Mr. Berkheimer admitted that
parsers had existed for years prior to his patent.
J.A. 1106. Because the claims are directed to an abstract
idea, we proceed to the second step of the Alice inquiry.
At step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the
12 BERKHEIMER v. HP INC.
nature of the claim’ into a patent eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78–
79). The second step of the Alice test is satisfied when the
claim limitations “involve more than performance of ‘well-
understood, routine, [and] conventional activities previ-
ously known to the industry.’” Content Extraction,
776 F.3d at 1347–48 (quoting Alice, 134 S. Ct. at 2359).
The question of whether a claim element or combina-
tion of elements is well-understood, routine and conven-
tional to a skilled artisan in the relevant field is a
question of fact. Any fact, such as this one, that is perti-
nent to the invalidity conclusion must be proven by clear
and convincing evidence. See Microsoft Corp. v. i4i Ltd.
P’ship, 564 U.S. 91, 95 (2011). Like indefiniteness, ena-
blement, or obviousness, whether a claim recites patent
eligible subject matter is a question of law which may
contain underlying facts. Akzo Nobel Coatings, Inc. v.
Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016)
(“Indefiniteness is a question of law that we review de
novo, [] subject to a determination of underlying facts.”);
Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180,
1188 (Fed. Cir. 2014) (“Whether a claim satisfies the
enablement requirement of 35 U.S.C. § 112 is a question
of law that we review without deference, although the
determination may be based on underlying factual find-
ings, which we review for clear error.”); Apple Inc. v.
Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1047 (Fed. Cir.
2016) (en banc) (“Obviousness is a question of law based
on underlying facts.”). We have previously stated that
“[t]he § 101 inquiry ‘may contain underlying factual
issues.’” Mortg. Grader, 811 F.3d at 1325 (emphasis in
original) (quoting Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir.
2013)). And the Supreme Court recognized that in mak-
ing the § 101 determination, the inquiry “might some-
times overlap” with other fact-intensive inquiries like
novelty under § 102. Mayo, 566 U.S. at 90.
BERKHEIMER v. HP INC. 13
As our cases demonstrate, not every § 101 determina-
tion contains genuine disputes over the underlying facts
material to the § 101 inquiry. See, e.g., Content Extrac-
tion, 776 F.3d at 1349 (patent owner conceded the argued
inventive concept “was a routine function of scanning
technology at the time the claims were filed”); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (patent owner argued an
“interactive interface” is “a specific application of the
abstract idea that provides an inventive concept” and did
not dispute that the computer interface was generic).
Whether a claim recites patent eligible subject matter is a
question of law which may contain disputes over underly-
ing facts. Patent eligibility has in many cases been re-
solved on motions to dismiss or summary judgment.
Nothing in this decision should be viewed as casting
doubt on the propriety of those cases. When there is no
genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood,
routine, conventional to a skilled artisan in the relevant
field, this issue can be decided on summary judgment as a
matter of law.
Here, the district court concluded that the claims do
not contain an inventive concept under Alice step two
because they describe “steps that employ only ‘well-
understood, routine, and conventional’ computer func-
tions” and are claimed “at a relatively high level of gener-
ality.” Berkheimer, 224 F. Supp. 3d at 647–48 (quoting
Content Extraction, 776 F.3d at 1348). Mr. Berkheimer
argues portions of the specification referring to reducing
redundancy and enabling one-to-many editing contradict
the district court’s finding that the claims describe well-
understood, routine, and conventional activities. He
argues, both below and on appeal, that summary judg-
ment is improper because whether the claimed invention
is well-understood, routine, and conventional is an under-
lying fact question for which HP offered no evidence.
14 BERKHEIMER v. HP INC.
While patent eligibility is ultimately a question of
law, the district court erred in concluding there are no
underlying factual questions to the § 101 inquiry. Id. at
642. Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent
is a factual determination. Whether a particular technol-
ogy is well-understood, routine, and conventional goes
beyond what was simply known in the prior art. The
mere fact that something is disclosed in a piece of prior
art, for example, does not mean it was well-understood,
routine, and conventional.
Mr. Berkheimer argues that the claimed combination
improves computer functionality through the elimination
of redundancy and the one-to-many editing feature, which
provides inventive concepts. The specification of the ’713
patent discusses the state of the art at the time the patent
was filed and the purported improvements of the inven-
tion. Conventional digital asset management systems at
the time included “numerous documents containing
multiple instances of redundant document elements.”
’713 patent at 1:24–27. This redundancy in conventional
systems led to “inefficiencies and increased costs.” Id. at
2:22–26. The specification explains that the claimed
improvement increases efficiency and computer function-
ality over the prior art systems:
By eliminating redundancy in the archive 14, sys-
tem operating efficiency will be improved, storage
costs will be reduced and a one-to-many editing
process can be implemented wherein a singular
linked object, common to many documents or files,
can be edited once and have the consequence of
the editing process propagate through all of the
linked documents and files. The one-to-many ed-
iting capability substantially reduces effort need-
ed to up-date files which represent packages or
packaging manuals or the like as would be under-
stood by those of skill in the art.
BERKHEIMER v. HP INC. 15
Id. at 16:52–60.
The specification describes an inventive feature that
stores parsed data in a purportedly unconventional man-
ner. This eliminates redundancies, improves system
efficiency, reduces storage requirements, and enables a
single edit to a stored object to propagate throughout all
documents linked to that object. Id. The improvements
in the specification, to the extent they are captured in the
claims, create a factual dispute regarding whether the
invention describes well-understood, routine, and conven-
tional activities, see Content Extraction, 776 F.3d at 1347–
48, so we must analyze the asserted claims and determine
whether they capture these improvements, Alice,
134 S. Ct. at 2357.
The parties dispute whether these improvements to
computer functionality are captured in the claims. See
Appellant Br. at 42; Appellee Br. at 39–40, 43–44. We
conclude that claim 1 does not recite an inventive concept
sufficient to transform the abstract idea into a patent
eligible application. Claim 1 recites a method of archiving
including parsing data, analyzing and comparing the data
to previously stored data, and presenting the data for
reconciliation when there is a variance. It does not in-
clude limitations which incorporate eliminating redun-
dancy of stored object structures or effecting a one-to-
many change of linked documents within an archive. It
does not even require the storage of data after it is pre-
sented for manual reconciliation. Thus, it does not recite
any of the purportedly unconventional activities disclosed
in the specification. Mr. Berkheimer does not advance
any separate arguments regarding claims 2–3 and 9.
Even considering these claims separately, they recite
patent ineligible subject matter for the same reason.
Mr. Berkheimer argues that claim 1 recites an im-
provement to computer functionality and digital asset
management systems. Mr. Berkheimer, however, admit-
16 BERKHEIMER v. HP INC.
ted that parsers and the functions they perform existed
for years before his patent. J.A. 1106. These convention-
al limitations of claim 1, combined with limitations of
analyzing and comparing data and reconciling differences
between the data, “fail to transform th[e] abstract idea
into a patent-eligible invention.” Alice, 134 S. Ct. at 1357.
The limitations amount to no more than performing the
abstract idea of parsing and comparing data with conven-
tional computer components. Because claims 1–3 and 9
do not capture the purportedly inventive concepts, we
hold that claims 1–3 and 9 are ineligible.
Claims 4–7, in contrast, contain limitations directed
to the arguably unconventional inventive concept de-
scribed in the specification. Claim 4 recites “storing a
reconciled object structure in the archive without sub-
stantial redundancy.” The specification states that stor-
ing object structures in the archive without substantial
redundancy improves system operating efficiency and
reduces storage costs. ’713 patent at 16:52–58. It also
states that known asset management systems did not
archive documents in this manner. Id. at 2:22–26. Claim
5 depends on claim 4 and further recites “selectively
editing an object structure, linked to other structures to
thereby effect a one-to-many change in a plurality of
archived items.” The specification states one-to-many
editing substantially reduces effort needed to update files
because a single edit can update every document in the
archive linked to that object structure. Id at 16:58–60.
This one-to-many functionality is more than “editing data
in a straightforward copy-and-paste fashion,” as charac-
terized by the district court. Berkheimer, 224 F. Supp. 3d
at 645. According to the specification, conventional
digital asset management systems cannot perform one-to-
many editing because they store documents with numer-
ous instances of redundant elements, rather than elimi-
nate redundancies through the storage of linked object
structures. ’713 patent at 1:22–55, 4:4–9, 16:52–60.
BERKHEIMER v. HP INC. 17
Claims 6–7 depend from claim 5 and accordingly contain
the same limitations. These claims recite a specific
method of archiving that, according to the specification,
provides benefits that improve computer functionality.
HP argues that redundancy and efficiency are consid-
erations in any archival system, including paper-based
systems. The district court agreed. Berkheimer,
224 F. Supp. 3d at 647. At this stage of the case, however,
there is at least a genuine issue of material fact in light of
the specification regarding whether claims 4–7 archive
documents in an inventive manner that improves these
aspects of the disclosed archival system. Whether claims
4–7 perform well-understood, routine, and conventional
activities to a skilled artisan is a genuine issue of materi-
al fact making summary judgment inappropriate with
respect to these claims.
We do not decide today that claims 4–7 are patent eli-
gible under § 101. We only decide that on this record
summary judgment was improper, given the fact ques-
tions created by the specification’s disclosure.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s decision that claims 10–19 of the ’713 patent are
invalid as indefinite and its grant of summary judgment
that claims 1–3 and 9 of the ’713 patent are ineligible
under 35 U.S.C. § 101. We vacate the district court’s
grant of summary judgment that claims 4–7 are ineligible
under § 101 and remand for further proceedings.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.