| James SmithAdam Powell

Editor: Paul Stewart

Federal Circuit Summaries

Before Moore, Taranto, and Stoll.  Appeal from the United States District Court for the Northern District of Illinois.

Summary: (1) Terms of degree, including “minimal,” may render claims indefinite if the specification fails to provide “objective boundaries” for the term; and (2) while patent eligibility is ultimately a question of law, the underlying question of whether something is “well-understood, routine, and conventional” is a factual issue.

Berkheimer asserted a patent relating to digitally processing and archiving files. The district court held several claims invalid after concluding that the claim term “archive exhibits minimal redundancy” was indefinite.  HP then moved for summary judgment that the remaining claims were ineligible under 35 U.S.C. § 101.  The district court granted that motion and Berkheimer appealed to the Federal Circuit.

The Federal Circuit affirmed the district court’s finding of indefiniteness.  The specification itself used inconsistent terminology to describe “minimal redundancy.”  The specification also did not contain any point of comparison to determine an objective boundary for what “minimal” meant.

With respect to the Section 101 decision, the Federal Circuit affirmed in part and remanded in part.  Regarding the first step of Alice, the Federal Circuit held that each of the claims was directed to an abstract idea.  Regarding the second step of Alice, the Federal Circuit held that the question of whether a claim element or combination of elements is well-understood, routine and conventional is a question of fact that must be proven by clear and convincing evidence.  Here, there was a genuine issue of fact as to whether the claims recited well-understood, routine, and conventional activities to a skilled artisan.  Thus, the Federal Circuit remanded for further proceedings regarding this factual question. 

This case is: BERKHEIMER V. HP INC.