A Northern District of Illinois judge has granted HP's motion for summary judgment against inventor Steven E. Berkheimer, ruling that the remaining claims of the sole patent-in-suit are invalid as indefinite. Over the course of Berkheimer's ten-year litigation against the company, that patent ended up playing a key role in another area of patent law: it was also the subject of the Federal Circuit's 2018 decision in Berkheimer v. HP, which along with its companion holding in Aatrix Software v. Green Shades Software limited defendants' ability to file early patent eligibility challenges based on the Supreme Court's Alice opinion.
Berkheimer filed the lawsuit below in November 2012 ( 1:12-cv-09023), asserting the patent at issue (7,447,713) against HP's Exstream software-subsequently sold to OpenText-which offers document management and customer communication features. After initial rulings took down the inventor's claims of contributory infringement, the dispute turned to indefiniteness for the first time-with HP arguing in its Markman brief that claim 10 is invalid because the intrinsic evidence does not specify the required amount of redundancy for the term "archive exhibits minimal redundancy". District Judge John Z. Lee accepted HP's argument in a claim construction order issued in August 2015, ruling that claim 10, and thus dependent claims 11-19, are invalid as indefinite.
The defendant then filed a motion for summary judgment that the remaining asserted claims-1-7 and 9-are invalid under Alice as directed to the abstract idea of "reorganizing data (e.g., a document file) and presenting the data for manual reconciliation" without the addition of an inventive concept. Judge Lee granted summary judgment for HP in December 2016, holding that all of the challenged claims are invalid as directed to the abstract idea of "collecting, organizing, comparing, and presenting data" and that the claims "employ only 'well-understood, routine, and conventional' computer functions" (citing the Federal Circuit's decision in Content Extraction & Transmission v. Wells Fargo Bank).
The Federal Circuit affirmed the ruling of indefiniteness in its February 2018 decision on appeal, holding that the district court had not erred by relying on the testimony of an HP expert that "an ordinarily skilled artisan would not have known what the term 'minimal redundancy' meant in claim 10". The court also found that neither the claim language itself nor the prosecution history provided sufficient clarity, and held that Judge Lee had erred in his interpretation of the extrinsic evidence.
However, the Federal Circuit famously reversed as to Alice, holding that summary judgment was premature because there still existed significant material questions of fact relevant to the determination of whether the claims at issue are inventive. The court's decision one week later in Aatrix held that such factual disputes could also preclude resolution of 101 challenges at the Rule 12 stage.
The impact of those rulings has been significant, undercutting defendants' ability to rely on Alice as a defensive tool. As covered extensively by RPX (e.g., here), Berkheimer and Aatrix have dramatically narrowed defendants' ability to succeed with Alice motions in the early stages of district court litigation: While about 65% of patents challenged under Alice were invalidated prior to Berkheimer, the invalidation rate for patents adjudicated since then has dropped by around 20%. With the Supreme Court's January 2020 decision not to revisit Berkheimer, this now appears to be the status quo.
As for the Berkheimer litigation itself, though, HP subsequently challenged the validity of the remaining claims of the '713 patent (claims 4-7) on remand on both indefiniteness and ineligibility grounds. In particular, the defendant argued that those claims were invalid as indefinite because they contain a claim term, "without substantial redundancy", that is sufficiently similar to the one previously held to be indefinite, "minimal redundancy".
Judge Lee agreed in his March 29 order granting summary judgment, which extensively cited the Federal Circuit's reasoning on indefiniteness. Beginning his analysis with the claim language itself, Judge Lee ruled that like the term "minimal redundancy", "without substantial redundancy" gave "scant guidance about the scope of the claimed method to one skilled in the art because there is no defined threshold in the claim language for what constitutes a 'substantial' amount of redundancy". Nor could Judge Lee find any "objective boundary" be found in the specification, which he instead found to use "'inconsistent terminology" to describe the level of redundancy permitted in the archive". Judge Lee also held that the prosecution history similarly lacks clarity, noting the Federal Circuit's conclusion that this history was "unhelpful in defining "minimal redundancy" because it "[did] not explain how much redundancy is permitted"-and finding that the plaintiff had shown no evidence to justify a departure from that holding for "without substantial redundancy": "If anything, the prosecution history supports a finding of indefiniteness. As HP's expert explains, both the examiner and Berkheimer treated 'without substantial' and 'minimal' synonymously concerning the office's indefiniteness rejection". The court further found that Berkheimer had not offered "any extrinsic evidence showing how much redundancy is 'substantial'".
After dispensing with the inventor's counterarguments with respect to procedure (that HP had waived its indefinite challenge, and had violated a scheduling order in raising the issue when it did) and substance (as either already rejected by the Federal Circuit, insufficiently supported, or otherwise unpersuasive), Judge Lee granted the motion as to indefiniteness and entered judgment for HP. The court did not reach the defendant's other arguments, including patent eligibility, nor the plaintiff's cross-motion for summary judgment of induced infringement.
See here for more on the state of the law on patent eligibility since the Federal Circuit's Berkheimer decision, including the still-pending Supreme Court appeal of the Federal Circuit's American Axle decision, the prospects of legislative reform, and a data breakdown of district court 101 outcomes.
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