Claims Directed to the Abstract Idea of Encoding/Decoding Image Data are Found Not Patent Eligible
| May 22, 2017
RecogniCorp v. Nintendo
April 28, 2017
Before Lourie, Reyna and Stoll. Opinion by Reyna.
Summary:
RecogniCorp sued Nintendo in district court for infringement of U.S. Patent No. 8,005,303 (“ the ‘303 patent”) directed to a method and apparatus for encoding/decoding image data. Nintendo filed a motion for judgment on the pleadings, asserting that the claims were ineligible under 35 U.S.C. §101. The district court concluded that RecogniCorp’s claims failed the Alice test, and granted Nintendo’s motion. On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed, finding that the ‘303 patent’s claims are directed to the abstract idea of encoding and decoding image data, and the claims do not contain an inventive concept sufficient to render the claims patent eligible.
Details:
The ‘303 patent relates to a system and method for constructing a composite facial image using constituent parts (e.g., hair, eyes, nose, mouth, chin). The composite facial images are typically stored in files in some graphical format, such as a “bitmap”, “gif” or “jpeg”. Although these file formats provide a compressed representation of the image, the memory required for storing the image remains significant. In addition, compressing the images generally degrades the quality of the images. The size and quality of images is particularly significant when the images are digitally transmitted from one site to another via a digital link. For example, a given police station may transmit a composite picture to another police station in order to share information about a given suspect. The ’303 patent sought to solve these problems by encoding the image at one end through a variety of image classes that required less memory and bandwidth, and at the other end decoding the images.
Representative claim 1 is set forth below.
1. A method for creating a composite image, comprising:
displaying facial feature images on a first area of a first display via a first device associated with the first display, wherein the facial feature images are associated with facial feature element codes;
selecting a facial feature image from the first area of the first display via a user interface associated with the first device, wherein the first device incorporates the selected facial feature image into a composite image on a second area of the first display, wherein the composite image is associated with a composite facial image code having at least a facial feature element code and wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters to the multiplication operation; and
reproducing the composite image on a second display based on the composite facial image code.
At Alice[1] step one, the district court concluded that the asserted claims are “directed to the abstract idea of encoding and decoding composite facial images using a mathematical formula.” At Alice step two, the district court found that the ’303 patent contains no inventive concept. It stated that “the entirety of the ’303 Patent consists of the encoding algorithm itself or purely conventional or obvious pre-solution activity and post-solution activity insufficient to transform the unpatentable abstract idea into a patent-eligible application.”
The CAFC reviewed the district court’s decision de novo.
Alice step one
Before the CAFC, regarding Alice step one, RecogniCorp argued that, as in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), “the district court mischaracterized the invention using an improperly high level of abstraction that ignored the particular encoding process recited by the claims.” The CAFC disagreed noting that the claims are clearly directed to encoding and decoding image data, and, unlike Enfish, claim 1 does not claim a software method that improves the functioning of a computer.
The CAFC found the Alice step one analysis of the ‘303 patent claims to be similar to the analysis of the claims in Digitech v. Electronics for Imaging, 758 F.3d 1344 (Fed. Cir. 2014), where the claim at issue “recites a process of taking two data sets and combining them into single data set” by organizing existing data into a new form. Comparing the Alice step one analysis in Digitech to the present case, the CAFC remarked, “In this case, the ’303 patent claims a method whereby a user starts with data, codes that data using ‘at least one multiplication operation,’ and ends with a new form of data. We discern no material difference between the Alice step one analysis in Digitech and the analysis here.”
At Alice step one, the CAFC found that claim 1 is directed to the abstract idea of encoding and decoding image data. The CAFC stated, “It claims a method whereby a user displays images on a first display, assigns image codes to the images through an interface using a mathematical formula, and then reproduces the image based on the codes. This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.”
Alice step two
Before the CAFC, regarding Alice step two, RecogniCorp argued that the claims of the ’303 patent contain an inventive concept sufficient to render them patent-eligible. Specifically, RecogniCorp contended that the combination of claim elements related to the “particular encoding process using the specific algorithm disclosed” in the patent “transforms” the abstract idea into a patent eligible invention.
The CAFC found that these claim elements do not transform the nature of the ’303 patent claims into a patent-eligible application.
In explaining its reasoning regarding Alice step two, the CAFC distinguished its decisions in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016).
The CAFC explained that, unlike in DDR Holdings, where the patent claims satisfied Alice step two because “the claimed solution amounts to an inventive concept for resolving [a] particular Internet-centric problem”, claim 1 of the ’303 patent contains no similar inventive concept. Nothing “transforms” the abstract idea of encoding and decoding into patent-eligible subject matter.
The CAFC also explained that the presence of a mathematical formula in the claim does not transform the abstract idea of encoding and decoding into patent-eligible subject matter. The addition of a mathematical equation that simply changes the data into other forms of data cannot save the claim.
Finally, the CAFC explained that in BASCOM, the patent owner “alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea.” However, here, RecogniCorp had not alleged a particularized application of encoding and decoding image data. The CAFC noted, “Indeed, claim 1 does not even require a computer; the invention can be practiced verbally or with a telephone. Independent claim 36 claims the use of a computer, but it does exactly what we have warned it may not: tell a user to take an abstract idea and apply it with a computer.”
[1] The two step test established by the Supreme Court in Alice Corp. v. CLS Bank, Int’l, to determine whether patent claims are directed to ineligible subject matter:
(1) Determine whether the claims at issue are directed to a patent ineligible concept (i.e., an abstract idea).
(2) If yes in step 1, determine whether the patent claims an inventive concept sufficient to transform the claimed abstract idea into a patent eligible application.
