Berkheimer v. HP Inc.

• Decision Date: 29 March 2022
• Docket Number: 12 C 9023
• Parties: STEVEN E. BERKHEIMER, Plaintiff, v. HP INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

STEVEN E. BERKHEIMER, Plaintiff, v. HP INC., Defendant.

No. 12 C 9023

United States District Court, N.D. Illinois, Eastern Division

March 29, 2022

MEMORANDUM OPINION AND ORDER

John Z. Lee United States District Judge

Plaintiff Steven Berkheimer has sued Defendant HP, Inc., under 35 U.S.C. § 1 et seq., alleging infringement of U.S. Patent No. 7, 447, 713 (“the '713 Patent”). The parties have cross-moved for summary judgment. For the reasons that follow, HP's motion is granted, and Berkheimer's motion is denied.

I. Background^[1]

The Court presumes familiarity with the factual background of this case from its prior orders, ^[2] but in brief: Berkheimer is the owner of the patent-in-suit, which claims a method of digital file management in which “object-oriented representations” of documents and graphics are “manipulated and then entered into an archival database with minimal redundancy.” ‘713 Patent col. 1 ll. 15-19, ECF No. 20-1. Using these methods, a computer program can recognize components of a document (such as headlines, text blocks, or images) and archive the document by storing data corresponding to these components in separate locations in the archive. See Id. at col. 2 ll. 53-65. By parsing the document into these separate components, the program “allow[s] multiple users to work on different components of a document at the same time and from different locations.” Id. at cols. 39-40. If multiple documents in an archive share a common component, a user can edit those documents simultaneously with a one-time edit to the common component. Id. at col. 3 ll. 19-25. The claimed methods therefore “promote efficiency, ” “achieve object integrity, ” and “reduce turnaround time and costs” in the digital asset management process. Id. at col. 2 ll. 38-52; col. 3 ll. 40-50.

Berkheimer originally asserted claims 1 through 19 against HP, but the Court held claims 10 through 19 invalid for indefiniteness at claim construction. See Berkheimer, 2015 WL 4999954 at *9-11. The Court then granted HP's motion for summary judgment as to the remaining claims on patent ineligibility grounds. See Berkheimer, 224 F.Supp.3d at 648. On appeal, the Federal Circuit affirmed the grant of summary judgment as to claims 1 through 3 and 8 and the ruling of indefiniteness as to claims 10 through 19. Berkheimer, 881 F.3d at 1370. But the court vacated and remanded the grant of summary judgment as to claims 4 through 7, because it concluded that factual issues remained as to whether the limitations in those claims performed well-understood, routine, and conventional activities to a person of ordinary skill in the art (“POSITA”). See Id. at 1370-71; see also Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014). Thus, the instant motions address only these four claims-claims 4, 5, 6 and 7.

Claim 4 is a dependent claim deriving from Claim 1, and claims 5, 6 and 7 are dependent claims of Claim 4. Claim 1 reads:

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 information tags associated therewith;

evaluating the object structures in accordance 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 predetermined standard and a user defined rule.

‘713 Patent col. 47 ll. 9-21. Claim 4 reads:

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.

Id. at ll. 28-30. And claims 5 through 7 read:

5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

6. The method as in claim 5 which includes compiling an item to be output from the archive, wherein at least one object-type structure of the item has been edited during the one-to-many change and wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file format.

7. The method as in claim 6 which includes compiling a plurality of items wherein the at least one object-type structure has been linked in the archive to members of the plurality.

Id. at ll. 31-44.

HP has moved for summary judgment on three grounds: indefiniteness under 35 U.S.C. § 112; patent ineligibility under 35 U.S.C. § 101; and noninfringement. Berkheimer has moved for summary judgment on grounds of induced infringement.

II. Legal Standard

Summary judgment is appropriate where “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The evidence considered for summary judgment “must be admissible if offered at trial, except that affidavits, depositions, and other written forms of testimony can substitute for live testimony.” Malin v. Hospira, Inc., 762 F.3d 552, 554-55 (7th Cir. 2014). In reviewing a motion for summary judgment, the Court gives the nonmoving party “the benefit of conflicts in the evidence and reasonable inferences that could be drawn from it.” Grochocinski v. Mayer Brown Rowe & Maw, LLP, 719 F.3d 785, 794 (7th Cir. 2013).

The moving party has the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The nonmoving party must then “come forth with specific facts showing that there is a genuine issue for trial.” LaRiviere v. Bd. of Trs. of S. Ill. Univ., 926 F.3d 356, 359 (7th Cir. 2019) (quoting Spierer v. Rossman, 798 F.3d 502, 507 (7th Cir. 2015)). To satisfy that ultimate burden, the nonmoving party must “do more than simply show that there is some metaphysical doubt as to the material facts, ” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986), and instead must “establish some genuine issue for trial such that a reasonable jury could return a verdict in her favor, ” Gordon v. FedEx Freight, Inc., 674 F.3d 769, 772-73 (7th Cir. 2012). Where, as here, the parties have filed cross-motions, courts “take the motions one at a time, construing all facts and drawing all reasonable inferences in favor of the non-moving party.” Black Earth Meat Mkt., LLC v. Vill. of Black Earth, 834 F.3d 841, 847 (7th Cir. 2016).

III. Analysis

The Federal Circuit held that the term “minimal redundancy” in claims 10 through 19 of the ‘713 Patent was invalid for indefiniteness under 35 U.S.C. § 112. See Berkheimer, 881 F.3d at 1364. HP now argues that claims 4, 5, 6 and 7 are also invalid for indefiniteness because they contain the similar language “without substantial redundancy.” For the reasons that follow, the Court agrees.

A claim is invalid for indefiniteness if, “viewed in light of the specification and prosecution history, ” the claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). It is not enough for a court to ascribe some meaning to a patent's claim. See id. at 911 (emphasis added). Rather, “the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Id. Hence, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, 572 U.S. at 911-12 & n.8) (emphasis added), cert. denied, 577 U.S. 913 (2015).

The Court examines multiple sources to determine whether a claim is indefinite. First, the Court evaluates the language of the claim and the specification to determine if it delineates objective boundaries. See Berkheimer, 881 F.3d at 1363- 64. Second, the Court must consider the patent's prosecution history. See Id. at 1364. Finally, if the claims, specification, and prosecution history do not reveal an objective boundary, the Court can rely on extrinsic evidence. See id.

A. Claim Language and Specification

The phrase “without substantial redundancy” in claims 4 through 7 is not reasonably clear on its face. Like “minimal redundancy, ” “without substantial redundancy” provides 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. See ‘713 Patent col. 47 ll. 28-44.

Nor does the specification contain any objective boundary. Patents commonly use examples to provide objective boundaries for facially ambiguous terms. See, e.g., Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370 1379-81 (Fed. Cir. 2017) (holding “visually negligible” was definite, as particular examples in the specification provided “points of comparison” for skilled artisans to discern the scope of the term); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334-35 (Fed. Cir. 2010) (holding “not interfering substantially” was definite because the specification provided sufficient examples to enable a person of ordinary skill in the art to determine the scope of the claims). By contrast, a claim term may be indefinite if there remains uncertainty between the claim language and written description. See Interval Licensing, 766 F.3d at 1371-74 (concluding “unobtrusive manner that does not distract a user” was indefinite because the single instance of “unobtrusive manner” in the specification did not outline the claims to a...