In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea

Bill Schertler | August 18, 2014

Digitech Image Technologies v. Electronics For Imaging, Inc.

July 11, 2014

Panel: Moore, Reyna, Hughes. Opinion by Reyna.

Summary

Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system.  Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California.  Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101.  The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible.  On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.

Details

The ‘415 patent is directed to the generation and use of an improved device profile that describes spatial and color properties of a device within a digital image processing system.

Different devices (e.g., digital cameras, TVs, printers, monitors, etc.) reproduce the same image file differently as a result of some level of distortion introduced by the device on an image’s spatial and color properties.  Because of this distortion, for example, what you see on your monitor doesn’t match what is printed by your printer.  There are two known solutions to this problem – device dependent solutions and device independent solutions.  Device dependent solutions to correct the distortion focus on modifying the color and spatial properties of the device itself.  Device independent solutions translate an image’s pixel data from a device dependent format into an independent color space that can be applied to any number of output devices.

The ‘415 patent relates to a device independent solution to correct the distortion by providing an improved device profile that includes both chromatic characteristic information and spatial characteristic information.  The ‘415 patent includes claims directed to the device profile and claims directed to a method of producing the device profile.

Device Profile Claims

The “device profile” claims define data describing a device dependent transformation of color and spatial information of an image to a device independent space.  Representative claims 1 and 26 are set forth below.

1.   A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

first data for describing a device dependent transformation of color information content of the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

26. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.

The district court concluded that the “device profile” claims are directed to a collection of numerical data that lacks a physical component or physical manifestation, and thus concluded that a device profile is nothing more than information and does not fall within one of the categories of eligible subject matter under 35 U.S.C. §101. 1

On appeal, Digitech argued that the “device profile” claimed in the ‘415 patent “is eligible subject matter under section 101 because it is a tangible object that is ‘an integral part of the design and calibration of a processor device within a digital image processing system.’”  Digitech also argued “a device profile is subject matter eligible because it is ‘hardware or software within a digital image processing system’ and exists as a tag file appended to a digital image.”

The CAFC disagreed with Digitech finding that the device profile described in the ‘415 patent is simply two sets of data – one set of data for color information and the other set of data for spatial information – and is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter.  The court noted that the asserted claims do not describe the “device profile” as a tag or any other embodiment of hardware or software, and are not directed to any tangible embodiment of the of the data, such as a physical memory or other medium, and do not claim any tangible part of the digital processing system.

The court concluded that data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under §101.

The Method Claims

The asserted method claims are directed to a process of generating the device profile.  Exemplary claim 10 is set forth below.

10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;

generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and combining said first and second data into the device profile.

Regarding the asserted method claims, the district court found the method for generating a device profile encompasses the abstract idea of organizing data through mathematical correlations, and thus concluded that the method claims were also ineligible under §101.

On appeal, Digitech argued that “the asserted method claims of the ‘415 patent are patent eligible because they describe a process for generating a device profile that is specifically tied to a digital image processing system and is integral to the transformation of a digital image.”

The CAFC disagreed with Digitech, finding that although the method claims fall within one of the four statutory categories (i.e., a process), they are directed to a patent ineligible abstract idea.

The CAFC applied the two-step process for determining patent eligibility offered by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347. 2 First, the court characterized the above method claim as reciting “a process of taking two data sets and combining them into a single data set, the device profile.”  The court thus defined the method claim as reciting “an ineligible abstract process of gathering and combining data that does not require input from a physical device.”  The court did not define “abstract idea”, other than to note that “fundamental concepts, by themselves, are ineligible abstract ideas”, citing Alice Corp. v. CLS Bank Int’l.  The court did not find any additional inventive features that would bring the claim outside the realm of an abstract idea.

In response to Digitech’s argument that the claim language ties the method to an image processor, the court noted that the only mention of “a digital reproduction system” is in the preamble and this recitation is non-limiting as reciting “the purpose or intended use of the invention”.  The court stated that “nothing in the claim language expressly ties the method to an image processor.  The claim generically recites a process of combining two data sets into a device profile; it does not claim the processor’s use of that profile in capturing, transforming or rendering the image data.”

The court concluded that “the method claimed in the’415 patent is this ‘so abstract and sweeping’ as to cover any and all uses of a device profile.”  The court did not decide whether tying the method to an image processor would lead to the conclusion that the claims are directed to patent eligible subject matter.

Takeaway

In view of the court’s statement in response to Digitech’s argument for patent eligibility of the method claim, i.e., “[t]he claim generically recites a process of combining two data sets into a device profile, it does not claim the processor’s use of that profile in capturing, transforming or rendering the image data”, it seems that the court would like to see how the claimed data (i.e., device profile) is specifically applied in the image data processing to bring the claim out of the realm of abstract idea.

Full Opinion


 

1. Pursuant to 35 U.S.C. 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof.”

2. The two-step test: First, determine whether the claim recites or is directed to a patent-ineligible concept such as an abstract idea, law of nature, or product of nature. Second, determine whether the claim recites sufficient additional inventive features such that the claim does not solely capture the abstract idea.

 

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