Tangible Components in the Claims could not save from 12(b)(6)Dismissal for patent-ineligible subject matter after Alice

Michael Caridi | June 6, 2016

TLI Communications LLC v. AV Automotive et al.

May 17, 2016

Before Dyk, Schall and Hughes.  Opinion by Hughes.

Summary

The East-District of Virginia dismissed the patent infringement suit under FRCP 12(B)(6) on the basis that the claims did not contain patent-eligible subject matter. TLI appealed to the CAFC.  The Court, relying heavily on the disclosures of the patent’s specification, affirmed the ruling noting that the tangible components in the claims were insufficient to survive the Alice test even without a finding of fact.

Details

a.   Background

TLI alleged that the defendants infringe U.S. Patent No. 6,038,295 (the ’295 patent) which relates to a method and system for taking, transmitting, and organizing digital images. The district court dismissed the complaint after concluding that the patent-in-suit fails to claim patent-eligible subject matter under 35 U.S.C. § 101.

The ‘295 patent claimed manually or automatically assigning “classification data,” such as a date or timestamp, to digital images and sending those images to a server. The server then extracts the classification data and stores the digital images, “taking into consideration the classification information.”  The CAFC relied on claim 17 as representative

17.   A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server,

wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images, receiving the data by the server, extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

The district court concluded that the claims are directed to “the abstract idea of taking, organizing, classifying, and storing photographs”  and declined to give patentable weight to the claims’ recitation of a telephone unit or a server, or to the “means for allocating” limitation in claims 1 and 25.

b.   Decision

The Court applied the Alice two-part test.   First, in determining whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea, the Court noted that “not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”  They then focused on the tangible aspects recited in claim 17, namely “a telephone unit” and a “server.”  Analyzing the specification of the ‘295 patent in detail they concluded:

“the specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner. And the specification’s emphasis that the present invention ‘relates to a method for recording, communicating and administering [a] digital image’ underscores that claim 17 is directed to an abstract concept.”

Citing to Enfish, LLC v. Microsoft Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. May 12, 2016), the Court analyzed whether the claims are directed to an improvement to computer functionality or an abstract idea.  They concluded that:

According to the ’295 patent, the problem facing the inventor was not how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data. Nor was the problem related to the structure of the server that stores the organized digital images. Rather, the inventor sought to “provid[e] for recording, administration and archiving of digital images simply, fast and in such way that the information therefore may be easily tracked.” ’295 patent, col. 1 ll. 62–65.

Further noting that the specification does not describe a new telephone, a new server or a new combination of the two they concluded that no improvements were made to the tangible aspects.

Then examining whether the claims were directed to a solution to a technical problem, per Diamond v. Diehr, 450 U.S. 175 (1981), the Board concluded that the claims are simply directed to the abstract idea of classifying and storing digital images in an organized manner.

The Court concluded the analysis of Alice step 1 by noting: “although the claims limit the abstract idea to a particular environment—a mobile telephone system—that does not make the claims any less abstract for the step 1 analysis.

Proceeding to step 2 of Alice, the Court examined whether any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea.

Noting TLI’s argument that, even if known in the prior art, the components recited in the claims cannot be “conventional” within the meaning of Alice absent fact-finding by the court, the Court nevertheless found that:

While we must be mindful of extraneous fact finding outside the record, particularly at the motion to dismiss stage, here we need to only look to the specification, which describes the telephone unit and server as either performing basic computer functions such as sending and receiving data, or performing functions “known” in the art.

The Court then again examined the “telephone unit” and “server” as described in the ‘295 patent and concluded that there are no disclosures that either of these tangible aspects are operating in any manner that is unexpected.

In any event, the specification confirms that the telephone unit itself behaves as expected…

Here, the server simply receives data, ‘extract[s] classification information … from the received data,” and “stor[es] the digital images… taking into consideration the classification information.’

These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.

Concluding that the physical components of the claims “behave exactly as expected according to their ordinary use” the Court found that the ‘295 patent fails to provide the requisite details necessary to carry out classifying and storing digital images in an organized manner in a telephone system and Affirmed the District Court’s  Rule 12(b)(6) dismissal.

Take Away

Tangible aspects within a claim that do nothing but provide the environment in which the abstract idea is carried out will not be sufficient to survive to a finding of fact.

The Courts may rely on the specification of the patent-in-suit alone to determine whether tangible components in the claims provide sufficient patent-eligible subject matter under the two part Alice test.

Full opinion

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