758 F.3d 1344
Fed. Cir.2014Background
- Digitech owns U.S. Patent No. 6,128,415, claiming an "improved device profile" that combines color (chromatic) and spatial characteristic information for digital image processing.
- The patent asserts device-profile claims (claims 1–6, 9, 26–31) and method claims for generating such profiles (claims 10–15); Digitech sued multiple defendants for infringement.
- Defendants moved for summary judgment under 35 U.S.C. § 101; the district court held all asserted claims ineligible as either abstract information or abstract processes and granted summary judgment for defendants.
- The Federal Circuit reviewed de novo and focused on whether (a) the device profile is a statutory category (machine, manufacture, composition) and (b) the method claims are tied to a concrete application or merely an abstract idea.
- The court concluded the device profile claims recite intangible data (collections of information) with no required physical embodiment and thus are not within statutory categories.
- The court held the method claims impermissibly recite an abstract process of organizing and combining data via mathematical correlations and lack machine- or structure-specific limitations sufficient to render them patent eligible.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claimed "device profile" is patent-eligible subject matter under § 101 | Digitech: the device profile is a tangible part of a digital image processing system (hardware/software/tag file) and integral to processor design/calibration | Device(s): the claims recite only information/data without any required physical embodiment and so are non-statutory | Held: device profile claims are directed to intangible information, not a machine, manufacture, or composition; ineligible under § 101 |
| Whether the asserted method claims are patent-eligible under § 101 | Digitech: the methods are specific to digital image processing and integral to transforming images, so they are concrete processes tied to a system | Device(s): the method merely organizes and combines data (mathematical correlations) and is not tied to a specific machine/structure; thus abstract | Held: method claims recite an abstract idea (organizing/combining data via math) and lack limiting machine-specific features; ineligible under § 101 |
Key Cases Cited
- In re Nuijten, 500 F.3d 1346 (Fed. Cir.) (transitory signal with embedded data not statutory subject matter)
- Diamond v. Chakrabarty, 447 U.S. 303 (Sup. Ct.) (definitions of patentable subject matter categories)
- Diamond v. Diehr, 450 U.S. 175 (Sup. Ct.) (application of mathematical formula to a known process may be patentable)
- Parker v. Flook, 437 U.S. 584 (Sup. Ct.) (claims directed to methods of calculation are nonstatutory)
- Gottschalk v. Benson, 409 U.S. 63 (Sup. Ct.) (claims preempting abstract ideas are ineligible)
- Burr v. Duryee, 68 U.S. 531 (Sup. Ct.) (definition of a machine as a concrete thing)
- Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir.) (preamble not limiting when it merely states purpose)
- Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir.) ("apply it" language insufficient to transform abstract idea)
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (Sup. Ct.) (two-step framework for assessing abstractness and inventive concept)