United States District Court, N.D. Illinois, Eastern Division
Steven E. Berkheimer, Plaintiff,
Hewlett-Packard Company, Defendant.
MEMORANDUM OPINION AND ORDER
Z. Lee United States District Judge
Steven E. Berkheimer (“Berkheimer”) has sued
Defendant Hewlett-Packard Company (“HP”) under 35
U.S.C. § 1 et seq., alleging infringement of
U.S. Patent No. 7, 447, 713 (“the '713
Patent”). HP has moved for summary judgment on the
ground that the asserted claims of the '713 Patent cover
patent-ineligible subject matter and are therefore invalid
under 35 U.S.C. § 101. For the reasons provided herein,
the Court grants HP's motion.
is the owner of the '713 Patent, which describes methods
for digitally processing and archiving files. Pl.'s Resp.
HP's SMF, Ex. 2 (“'713 Patent”) col.1
ll.10-11, ECF No. 164-2. The methods involve
“object-oriented representations” of documents
and graphics that are “manipulated and then entered
into an archival database with minimal redundancy.”
Id. at col.1 ll.15-19, col.2 l.38. For example,
using these methods, a computer program can recognize the
various components of a document (such as a headline, text
block, or image) and can archive the document by storing data
corresponding to each of these separate components.
Id. at cols.19-28 (diagramming an example of this
archiving process). Once a document has been archived in this
manner, multiple users can “work on different
components of a document at the same time and from different
locations.” Id. at cols. 39-40. And when
multiple documents in the archive share a common component
(for example, the same text block), a user can edit those
documents simultaneously with a one-time edit to the common
component that they share. Id. at cols. 41-42. These
features of the claimed methods “promote efficiency,
” “achieve object integrity, ” and
“reduce turnaround time and costs” in the digital
archiving process. Id. at col.2 ll.38-52, col.3
asserts Claims 1-7 and 9 of the '713 Patent against HP.
Def.'s SMF ¶¶ 7-8, ECF No. 157. Claim 1 is an
independent claim, and Claims 2-7 and 9 are dependent claims
deriving from Claim 1. See '713 Patent col. 47.
Claim 1 reads as follows:
1. A method of archiving an item in a computer processing
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 code.
Id. at col.47 ll.9-21.
a claim construction hearing, the parties asked the Court to
interpret the terms “parser, ” “parsing,
” and “evaluating, ” each of which appears
in Claim 1. See Berkheimer, 2015 WL 4999954, at *1.
Based on the hearing, the Court concluded that the term
“parser” means “a program that dissects and
converts source code into object code”;
“parsing” means “using a program that
dissects and converts source code into object code to dissect
and convert”; and “evaluating” means
“analyzing and comparing.” Id. at *12.
The parties also asked the Court to interpret the phrase
“evaluating the object structures in accordance with
object structures previously stored in an archive, ”
which appears in the third step of Claim 1. The Court defined
this phrase to mean “analyzing the plurality of
multipart object structures obtained by parsing and comparing
it with object structures previously stored in the archive to
determine if there is variance between the object and at
least one of a predetermined standard and a user defined
2-7 and 9 are dependent claims that add various steps and
limitations to the method recited in Claim 1. They read as
2. The method as in claim 1 wherein the respective structure
can be manually edited after being presented for
3. The method as in claim 1 which includes, before the
parsing step, converting an input item to a standardized
format for input to the parser.
4. The method as in claim 1 which includes storing a
reconciled object structure in the archive without
5. The method as in claim 4 which includes selectively
editing an object structure, linked to other structures to
thereby effect a one-to-many change in a plurality of
6. The method as in claim 5 which includes compiling an item
to be output from the archive, wherein at least one
object-type structure of the item has been edited during the
one-to-many change and wherein the compiled item includes a
plurality of linked object-type structures converted into a
predetermined output file format.
7. The method as in claim 6 which includes compiling a
plurality of items wherein the at least one object-type
structure has been linked in the ...