Berkheimer v. Hewlett-Packard Co.

Berkheimer v. Hewlett-Packard Co., 12-cv-9023-JZL (Lee, J.) (N.D. Ill. Dec. 12, 2016)

Patent(s):

  • 7,447,713 | Entitled, “System and method for archiving and outputting documents or graphical items”

Disposition:               

Court granted Defendant’s motion for summary judgment that the patent was invalid for failure to claim patent-eligible subject matter. 

Abstract Idea:

Yes

Something More:

No

Technology:              

Methods for digitally processing and archiving files including manipulating and entering into an archival database object-oriented representations of documents and graphics.

Summary:                 

In analyzing representative claim 1, the court determined that at their core, the steps described instructions for using a generic computer to collect, organize, compare, and present data for reconciliation prior to archiving. It rejected the plaintiff’s argument that the Federal Circuit’s holding in Enfish stood for the proposition that “any improvement to computer functionality itself bypasses the Alice step 1 abstract idea ineligibility exception.”  The Court next determined that the need to minimize redundancy in archival systems and to increase efficiency is a challenge that arises in any archival systems regardless of whether a computer is involved. In addition, the steps all involve conventional use of a computer with conventional computer functions—which does not correspond to an inventive concept. 

The court also analyzed the disagreement among courts regarding whether a clear-and-convincing standard applies when a claim is challenged under § 101. It discussed the jurisprudence on the matter and determined that having “considered the positions on both sides of this issue, it is persuaded that the clear-and-convincing standard has no role to play in the § 101 determination.” In doing so, it stated that its decision was consistent with SCOTUS’s i4i decision, the fact that § 101 determinations do not involve resolution of factual disputes, and the fact that the Supreme Court has made no mention of the clear-and-convincing standard in any of its patent-eligibility decisions since i4i.