BERKHEIMER v. HP INC., 17-1437, decided February 8, 2018

U.S. Patent No. 7,447,713, directed to digitally processing and archiving files.

By parsing and tagging objects for comparison based on standards and rules, redundant storage is reduced, improving system efficiency and storage costs and allowing object oriented editing (page 2).  The claims are directed the abstract ideas of parsing, comparing, editing, and storing data (pages 9-10).  “Parsing,” even if limited to computer technology, does not make the claim less abstract without evidence of parsing improving computer function (page 11).  For step two, there are factual disputes about whether the claimed invention is well-understood, routine, and conventional (pages 13-14).  The specification teaches that the inventive feature improves efficiency, reduces storage, and enables efficient editing (page 15).  Since claim 1 does not include limitations for eliminating redundancy or editing efficiency, or even storing data after reconciliation, the unconventional activities of the specification are not recited (pages 15-16).  Claims 4-7 do recite the improvements (e.g., storing without substantial redundancy) (pages 16-17).  If inventive, then claims 4-7 are not abstract (page 17).

Hindsight: A unique decision where some claims are abstract and other are not.  The difference is whether the recited  act providing the improvement to computer operation touted in the specification is recited.  Thus, teach an improvement in computer functionality, and recite that improvement in the claim.


U.S. Patent No. 7,447,713, directed to digitally processing and archiving files.

By parsing and tagging objects for comparison based on standards and rules, redundant storage is reduced, improving system efficiency and storage costs and allowing object oriented editing (page 2).  “Minimal redundancy” of some elements linked to other elements is not reasonably clear as to the level of redundancy (page 4).  The specification notes minimizing, eliminating, and reducing (page 4).  There is one example of no redundancy but no other point of comparison to provide the level  (page 4).  The file history merely notes that absolute elimination is not likely (page 5).

Hindsight: Avoid terms with no objective boundary.  If subjective, provide an objective way to determine in the specification.  Even better, use relative terms.  In the claim, start with one level and then have the other be reduced in comparison to the one level.