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A. Zahner Co. v. Hendrick Metal Products LLC

United States District Court, N.D. Illinois, Eastern Division

July 20, 2018




         Plaintiff A. Zahner Company sued Defendant Hendrick Metal Products, LLC for patent infringement. The patent at issue describes “a computer program and method” for generating machine code, which in turn must be usable for the purpose of “transfer[ring] a representation of an image to a building.” Defendant has moved [24] for judgment on the pleadings, arguing that the claims at issue are invalid because they are directed to “abstract” subject matter and do not add the type of “inventive concept” necessary for patent eligibility under 35 U.S.C. § 101. For the reasons explained below, Defendant's motion is granted in part and denied in part.


         Plaintiff Zahner is a Missouri corporation with its principal place of business in Kansas City, Missouri. (Am. Compl. [40], at ¶ 3.) The company manufactures and sells “crafted architectural metalwork for designers around the globe.” (Id. at ¶ 8.) Some of the company's products are metal sheets that feature complex images made from a series of holes, bumps, and indentations in the metal. One such product appears below:

         (Image Omitted)

         (Pl.'s Tech. Demonstrative 8.)

         Defendant Hendrick, a Delaware limited-liability company with its principal place of business in Elgin, Illinois, manufactures and sells “perforated and fabricated metal products for commercial and industrial applications.” (Id. at ¶¶ 4, 14.) In October 2014, representatives of Hendrick and Zahner discussed a licensing arrangement of some kind-the Amended Complaint provides no details on this discussion or the proposed arrangement-but the deal subsequently fell apart. (Id. at ¶ 15.) At some point-again, the Amended Complaint does not provide any details-Hendrick produced “a multi-panel installation of stylized animal images at the Mayo Clinic Square building in Minneapolis, Minnesota.” (Id. at ¶ 17.) The installation appears in the image below:

         (Image Omitted)

         (Pl.'s Tech. Demonstrative 9.) Zahner now alleges that Hendrick used a method to produce this installation that directly infringes “at least claims 1, 2, 5, 6, 7, 8, 9, 11, 12, 13, 17, and 18” of United States Patent No. 7, 212, 688 (hereafter “‘688 patent”), of which Zahner is the assignee. (Id. At ¶¶ 1-2.)[1]

         I. Zahner's patent

         The ‘688 patent is titled “Computer Program and Method for Converting an Image to Machine Control Data.” ‘688 patent, at [54]. It generally relates to “a computer program and method” for generating machine code, which can then be used to “transfer a representation of an image to a surface of a building.” Id. col. 1 ll. 46-47. As explained in the “Background of the Invention” section of the patent, “[b]uilders and architects are increasingly using metal sheets to clad buildings.” Id. col. 1 ll. 13-14. To “provide an aesthetic façade, ” these metal sheets are sometimes “manipulated” by a machine “to impart bumps” that form a pattern. Id. col.1 ll. 14-17. Transferring patterns to the metal sheets requires “highly complex machine code . . . to control the machine.” Id. col. 1 ll. 17-21. The code for complex patterns “must be generated almost completely by hand.” Id. col. 1 ll. 32-33. Such hand generation of code “is extremely tedious and even more susceptible to human error.” Id. col. 1 ll. 34-35. While the code for simpler images can be generated automatically, it too must be “checked for errors.” Id. col. 1 ll. 24. Often, it also must be “modified to accommodate features of a building, ” such as doors or windows. Id. col. 1 ll. 24-25.

         The ‘688 patent outlines a process for converting an existing image into machine code that purportedly “overcomes the above-identified problems.” Id. col. 1 ll. 43-44. The flow chart in Figure 7 “shows the functionality and operation of a preferred implementation” of the process:

         (Image Omitted)

         ‘688 Patent fig. 7, col. 6 ll.63-64.

         The patent specifications describe each step of this process in detail. First, at step 7a, the user “takes or otherwise creates” an image file-for example, by taking a digital photograph or by using a scanner to convert an existing image into an image file. ‘688 patent col. 7 ll. 9-12, 20-21. Next, at step 7b, this image file “is then received in the computer equipment and made available to the program.” Id. col. 7 ll. 13-14.

         At step 7c, the program “converts the image file [into a] raster file, ”[2] which consists of “a series of dots” that vary in size and are “preferably arranged according to a predetermined grid.” Id. col. 7 ll. 24-25, col. 4 ll. 23-24. The raster file is then “scaled, ” at step 7d, to correspond to the size of the surface (or the portion of the surface) to which the image will eventually be transferred. Id. col. 4 ll. 27-33.

         At step 7e, the user divides the raster file into “sub-components, ” each of which “correspond[s] to a different portion of the image” and can be modified individually without affecting the other sub-components. Id. col. 4 ll. 53-59, col. 7 ll. 27-28. The dots in each subcomponent are then “manipulated” by the user, at step 7f, “to accommodate features of the surface, such as windows and doors, ” or “to produce a logo or other indicia independent of the image.” Id. col. 4 ll. 60-64, col 7 ll. 29-31. These dots “are associated with markings that will be transferred to the [metal] sheets in order to create the representation of the image, once the sheets are assembled to cover the surface.” Id. col. 5 ll. 32-34. “Once the dots have been manipulated” according to the user's directions, “the program generates a control file for each sub-component” at step 7g. Id. col. 5 ll. 51-55, col. 7 ll. 31-35. These control files contain the machine code “from which the machine may transfer the markings onto the corresponding sheet, ” id. col. 5 ll. 54-55, thereby “imparting the representation to the surface, ” id., col. 7 ll. 34-35.

         These steps-converting an image into a computer file that displays the image as a series of dots, sizing the image to fit a surface, dividing the overall image into pieces, manipulating the dots in each piece to accommodate the surface's design elements, and then converting the computer file into a format that can be read by another machine-make up the core of the invention claimed by the ‘688 patent. Independent claim 17, for example, reads as follows:

         17. A method of transferring a representation of an image to a surface, the method comprising the steps of:

a) receiving the image as an image file;
b) converting the image file to an intermediate file comprising a series of dots that vary in dimensional size ...

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