“Minimal Redundancy” Makes Patent Claim Indefinite under § 112

The phrase “minimal redundancy” in a patent claim was indefinite under 35 USC § 112 where the patent specification inconsistently described levels of redundancy achieved by its system.  Berkheimer v. HP, Inc., No. 2017-1437 (Fed. Cir. Feb 8, 2017) (precedential) (opinion by Judge Moore, joined by Judges Taranto and Stoll). Accordingly, the court affirmed a district court’s summary judgment that claim 10 of US Patent No. 7,447,713 was indefinite. The court also addressed the patent-eligibility of other claims of the ’713 patent; the patent-eligibility issues are dealt with in another post.

Claim 10 of the ’713 patent recites:

10. An object, oriented archival system comprising:

a storage medium, and a set of executable instructions for establishing an archive of documents represented by linked object oriented elements stored in the medium, wherein the archive exhibits minimal redundancy with at least some elements linked to pluralities of the elements and wherein some of the instructions, in response to a selected editing command, alter at least one element common to and linked to a selected plurality of other elements to thereby effect a one-to-many editing process and additional instructions for compiling an output file, in a selected format.

Under the “reasonable certainty” standard established by the US Supreme Court in Nautilus, Inc. v. Biosign Instruments, Inc. (2014), the present court found that the District Court had not clearly erred in finding that the ’713 patent’s intrinsic evidence left “a person skilled in the art with a highly subjective meaning of ‘minimal redundancy.’” The language of the claims themselves “is not reasonably clear as to what level of redundancy in the archive is acceptable.” Therefore, it was necessary to turn to the patent specification.

But the specification was inconsistent in its use of “terminology to describe the level of redundancy that the system achieves.” The specification variously described minimizing, eliminating, and reducing redundancies. The specification’s only example was an archive with no redundancy. Yet the claim language “does not require elimination of all redundancies from the archive.” And the patent owner acknowledged in his brief that his invention “attempts to minimize redundancy but may not in all cases achieve absolute [elimination of] redundancy.” In short, the skilled artisan had no “objective boundary” for determining what redundancy was “minimal.”

Further, HP’s expert testified that a skilled artisan could not determine “the meaning of ‘archive exhibits minimal redundancy’ with reasonable certainty” from the ’713 patent. The patent owner in turn failed to “provide the court with expert testimony of his own.” The patent-owner’s argument that “an objective baseline” for “minimal redundancy” was provided by the recited “archive,” addressed “what must exhibit minimal redundancy,” but not “how much is minimal.” (Emphasis in original.)

Lessons for Practice

This case is an illustration of the importance of defining key claim terms. Some patent examiners issue indefiniteness rejections any time they see so-called “relative” or “qualitative” terminology. “Minimal” certainly is a relative term or “term of degree.” Yet the word need not make a claim term indefinite. Instead, when using such “relative” terminology, a patent drafter should consider whether quantitative or “objective” boundaries are disclosed. For example, imagine that “minimal” here had been defined as a level of redundancy where no more than a certain percentage of two compared files had overlapping data.

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