United States District Court, N.D. Illinois, Eastern Division
A. ZAHNER COMPANY, Plaintiff,
HENDRICK METAL PRODUCTS, LLC, Defendant.
MEMORANDUM OPINION AND ORDER.
REBECCA R. PALLMEYER UNITED STATES DISTRICT JUDGE.
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  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.
Zahner is a Missouri corporation with its principal place of
business in Kansas City, Missouri. (Am. Compl. , 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:
Tech. Demonstrative 8.)
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:
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 ¶¶
‘688 patent is titled “Computer Program and
Method for Converting an Image to Machine Control
Data.” ‘688 patent, at . 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.
‘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:
Patent fig. 7, col. 6 ll.63-64.
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.
7c, the program “converts the image file [into a]
raster file, ” 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.
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
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:
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