Considering the patent-eligibility of claims directed to archiving digital assets, the Federal Circuit has affirmed a district court decision invalidating an independent claim under 35 USC § 101 and Alice, while vacating and remanding a judgment that certain dependent claims were patent-ineligible. Berkheimer v. HP, Inc., No. 2017-1437 (Fed. Cir. Feb 8, 2018) (precedential) (opinion by Judge Moore, joined by Judges Taranto and Stoll). Along the way, the court chastised the District Court for using independent claim 1 of US Patent No. 7,447,713 as representative, while ignoring the patent owner’s separate arguments concerning dependent claims 4-7. The court also affirmed a holding of indefiniteness; that holding is discussed in this blog a separate post.
Claims 1 and 4 of the ’713 patent recites as follows (with claims 5-7 depending from claim 4):
1. A method of archiving an item comprising in a computer processing system:
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.
4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
The District Court picked claim 1 as representative for the patent-eligibility question because no other independent claim was asserted, and the patent owner’s “primary arguments” were all focused on claim 1. Reliance on these rationale was improper, said the Federal Circuit. The mere fact that a claim is independent does not make it representative, and the patent owner “advanced meaningful arguments regarding limitations found only in the dependent claims.” Those “separate arguments regarding claims 4-7 [were] not waived.” Moreover, the court raised the specter that the patent-eligibility analysis includes a fact-finding component:
While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. [Citation to district court opinion omitted.] Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.
Indeed, when claims 1 and 4 were each considered on the merits, it turned out that they did not rise and fall together for purposes of patent-eligibility. Claim 1 was governed by cases including TLI Communications LLC v. AV Automotive LLC (Fed. Cir. 2016) and Content Extraction & Transmission Llc v. Wells Fargo Bank (Fed. Cir. 2014). Claim 1 here was directed to the abstract idea of parsing, comparing, and storing information, just as claims in TLI Communications and Content Extraction were directed to collecting and recognizing and storing information. The patent owner was not helped by his admission “that parsers had existed for years prior to his patent;” the court found no technological improvement to challenge the finding under Alice step one that claim 1 was directed to an abstract idea.
Neither was claim 1 saved under step two of the Alice test (a significant additional innovation). The court agreed that the specification of the ’713 patent “describes an inventive feature that stores parsed data in a purportedly unconventional manner.” But this feature was not recited in claim 1, which simply recited “presenting the data for reconciliation when there is a variance” with previously stored data.
On the other hand, claims 4-7 “contain limitations directed to the arguably unconventional inventive concept” of, to quote claim 4, “storing a reconciled object structure in the archive without substantial redundancy.” Claims 5-7 further defined this concept. The method of archiving recited “according to the specification, provides benefits that improve computer functionality.” Therefore, there were questions of fact concerning “whether claims 4-7 archive documents in an inventive manner that improves these aspects of the disclosed archival system.” Summary judgment on these claims was therefore improper.
Lessons for Practice
Too often, dependent claims get swept up with their independent claims for purposes of prior art analysis in addition to, as seen here, patent-eligibility determinations. Dependent claims by definition have different scope than their independent claims. It is worth remembering when drafting claims, and when making arguments about patent eligibility, that, just as with application of prior art, dependent claims and their base claims do not necessarily rise and fall together.