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31 March 2022Patents

HP secures victory in decade-long patent suit

An Illinois judge has sided with technology company HP, in a decade-long dispute over the infringement of a data archival patent.

On Tuesday, March 29, District Judge John Lee of the US District Court for the Northern District of Illinois invalidated US patent number 7,447,713, a patent owned by inventor Steven Berkheimer.

The ruling comes four years after the US Court of Appeals for the Federal Circuit revived the suit, vacating summary judgment for claims 4 to 7.

Berkheimer had originally asserted claims 1 through 19 against HP, but the Illinois court held claims 10 through 19 invalid for indefiniteness at claim construction. The court had then granted HP’s motion for summary judgment as to the remaining claims on patent ineligibility grounds.

However, on appeal, the Federal Circuit revived claims 4 to 7, because it held 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”.

For claims 10 to 19, the Federal Circuit held that the term “minimal redundancy” was invalid for indefiniteness. Relying on this conclusion, before the Illinois court, HP argued that claims 4 to 7 were also invalid for indefiniteness because they contain the similar language “without substantial redundancy”.

After reviewing the language of the claim, the patent’s prosecution history and the extrinsic evidence, Lee sided with HP.

“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,” said Lee. “Nor does the specification contain any objective boundary.”

Lee concluded that the patent was invalid for indefiniteness, rejecting Berkheimer’s procedural objections and entering judgment for HP.

According to Ted Cannon, partner at Knobbe Martens, the Federal Circuit’s decision “was likely the most consequential development in patent eligibility” since the US Supreme Court introduced the two-part eligibility framework in Alice v CLS Bank and Mayo Collaborative Services v Prometheus Laboratories.

Cannon noted that the Berkheimer ruling emphasised that patent eligibility may turn on questions of fact, with the Federal Circuit relying on the presence of such fact questions to partially vacate the district court’s finding.

“Post-Berkheimer, the potentially fact-intensive nature of the eligibility inquiry may prevent courts from resolving section 101 challenges early in litigation,” said Cannon.

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