Berkheimer v. Hewlett-Packard Co., 12 C 9023

CourtUnited States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
Writing for the CourtJohn Z. Lee, United States District Judge
Citation224 F.Supp.3d 635
Parties Steven E. BERKHEIMER, Plaintiff, v. HEWLETT–PACKARD COMPANY, Defendant.
Decision Date12 December 2016
Docket Number12 C 9023

224 F.Supp.3d 635

Steven E. BERKHEIMER, Plaintiff,
v.
HEWLETT–PACKARD COMPANY, Defendant.

12 C 9023

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

Signed December 12, 2016


224 F.Supp.3d 637

James P. Hanrath, Michael J. Femal, Much Shelist Denenberg Ament & Rubenstein, PC, Chicago, IL, Paul J. Skiermont, Skiermont Derby LLP, Dallas, TX, for Plaintiff.

David. J. Levy, Thomas R. Davis, Morgan, Lewis & Bockius LLP, Houston, TX, Jason C. White, Nicholas A. Restauri, Scott D. Sherwin, Morgan Lewis & Bockius LLP, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

John Z. Lee, United States District Judge

Plaintiff 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.

Factual Background

Berkheimer 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 Once a document has been archived in this manner, multiple users can "work on different components of a document at the same time and from different locations."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 ll.40–50.

Berkheimer asserts Claims 1–7 and 9 of the '713 Patent against HP. Def.'s SMF ¶¶ 7–8, ECF No. 157.1 Claim 1 is an independent

224 F.Supp.3d 638

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 system comprising:

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.

During 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";2 "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 multi-part 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 rule." Id.

Claims 2–7 and 9 are dependent claims that add various steps and limitations to the method recited in Claim 1. They read as follows:

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

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 substantial redundancy.

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 archived items.

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
224 F.Supp.3d 639
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 archive to members of the plurality.

9. The method as in claim 1 which includes forming object oriented data structures from the parsed items wherein the data structures include at least some of item properties, item property values, element properties and element property values.

'713 Patent, col.47 ll.22–55.

Legal Standard

"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a) ; see also Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). At the summary judgment stage, a court must consider any disputed facts in the light most favorable to the nonmoving party, drawing all reasonable inferences in the nonmoving party's favor. Anderson v. Liberty Lobby , 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ; Grochocinski v. Mayer Brown Rowe & Maw, LLP , 719 F.3d 785, 794 (7th Cir. 2013). To survive summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts," Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), and instead "must establish some genuine issue for trial such that a reasonable jury could return a verdict in her favor." Gordon v. FedEx Freight, Inc. , 674 F.3d 769, 772–73 (7th Cir. 2012).

Analysis

In support of its motion for summary judgment, HP's sole contention is that the asserted claims of the '713 Patent are patent-ineligible and thus invalid under 35 U.S.C. § 101. Whether a patent claim is invalid under § 101 is a question of law. CyberSource Corp. v. Retail Decisions, Inc. , 654 F.3d 1366, 1369 (Fed. Cir. 2011) ; In re Bilski , 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc), aff'd , 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). Accordingly, courts may resolve questions concerning patent eligibility under § 101 validity on the pleadings or at the summary judgment stage. See, e.g. , Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n , 776 F.3d 1343, 1349 (Fed. Cir. 2014) ; buySAFE, Inc. v. Google, Inc. , 765 F.3d 1350, 1352 (Fed. Cir. 2014) ; CLS Bank Int'l v. Alice Corp. Pty. Ltd. , 717 F.3d 1269, 1274 (Fed. Cir. 2013), aff'd , ––– U.S. ––––, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014).

Section 101 governs the scope of the federal patent laws. It provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," is eligible to receive patent protection. 35 U.S.C. § 101. For over 150 years, the Supreme Court has interpreted § 101 and its predecessors to "contain[ ] an important implicit exception: [l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l , ––– U.S. ––––, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , ––– U.S. ––––, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) ). This exception strikes a balance between protecting truly new and useful inventions, on the one hand, and ensuring that the patent laws do not "improperly [tie] up ... the building blocks of human ingenuity," on the other. Alice , 134 S.Ct. at 2354 (quoting

224 F.Supp.3d 640

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4 practice notes
  • Berkheimer v. HP Inc., 2017-1437
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • February 8, 2018
    ...asserted independent claim and Mr. Berkheimer focused "all of his primary arguments" on claim 1.1 Berkheimer v. Hewlett-Packard Co. , 224 F.Supp.3d 635, 643 n.6 (N.D. Ill. Dec. 12, 2016). Neither rationale justifies treating claim 1 as representative. A claim is not representative simply be......
  • Gaelco S.A. v. Arachnid 360, LLC, 16 C 10629
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • December 21, 2017
    ...to those claims already found to be directed to an abstract idea in previous cases." Id. ; accord Berkheimer v. Hewlett–Packard Co. , 224 F.Supp.3d 635, 643 (N.D. Ill. 2016).In the last several years, the Federal Circuit has found numerous claims relating to gaming and claims relating to mo......
  • Tech. Dev. & Licensing, LLC v. Comcast Corp., Case No. 08-cv-3584, Case No. 09-cv-430.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • June 19, 2017
    ...664 Fed.Appx. 968, 972 n. 1 (declining to "address the proper evidentiary standard"). See also Berkheimer v. Hewlett–Packard Co. , 224 F.Supp.3d 635, 641 and n.3 (surveying case law and concluding that "the clear-and-convincing standard has no role to play in the § 101 determination" absent......
  • Berkheimer v. HP Inc., 12 C 9023
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • March 29, 2022
    ...Notes: [1] The following facts are undisputed or deemed admitted, unless otherwise noted. [2] See Berkheimer v. Hewlett-Packard Co., 224 F.Supp.3d 635 (N.D. Ill. 2016) (summary judgment), aff'd in part, vacated in part, and remanded sub nom. Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. ......
4 cases
  • Berkheimer v. HP Inc., 2017-1437
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • February 8, 2018
    ...asserted independent claim and Mr. Berkheimer focused "all of his primary arguments" on claim 1.1 Berkheimer v. Hewlett-Packard Co. , 224 F.Supp.3d 635, 643 n.6 (N.D. Ill. Dec. 12, 2016). Neither rationale justifies treating claim 1 as representative. A claim is not representative simply be......
  • Gaelco S.A. v. Arachnid 360, LLC, 16 C 10629
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • December 21, 2017
    ...to those claims already found to be directed to an abstract idea in previous cases." Id. ; accord Berkheimer v. Hewlett–Packard Co. , 224 F.Supp.3d 635, 643 (N.D. Ill. 2016).In the last several years, the Federal Circuit has found numerous claims relating to gaming and claims relating to mo......
  • Tech. Dev. & Licensing, LLC v. Comcast Corp., Case No. 08-cv-3584, Case No. 09-cv-430.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • June 19, 2017
    ...664 Fed.Appx. 968, 972 n. 1 (declining to "address the proper evidentiary standard"). See also Berkheimer v. Hewlett–Packard Co. , 224 F.Supp.3d 635, 641 and n.3 (surveying case law and concluding that "the clear-and-convincing standard has no role to play in the § 101 determination" absent......
  • Berkheimer v. HP Inc., 12 C 9023
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • March 29, 2022
    ...Notes: [1] The following facts are undisputed or deemed admitted, unless otherwise noted. [2] See Berkheimer v. Hewlett-Packard Co., 224 F.Supp.3d 635 (N.D. Ill. 2016) (summary judgment), aff'd in part, vacated in part, and remanded sub nom. Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. ......

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