Recognicorp, LLC v. Nintendo Co., Ltd.
855 F.3d 1322
| Fed. Cir. | 2017Background
- RecogniCorp sued Nintendo for infringing U.S. Patent No. 8,005,303 (the ’303 patent), titled "Method and Apparatus for Encoding/Decoding Image Data."
- The patent claims a method for building and transmitting composite facial images by assigning element codes to facial features, deriving a composite code (using at least one multiplication operation), and reproducing the image from that code.
- The PTO reexamined the patent and allowed amended claims that added the multiplication/code-factor language; the district court then lifted a stay and Nintendo moved for judgment on the pleadings under 35 U.S.C. § 101.
- The district court held the asserted claims ineligible under Alice step one as directed to the abstract idea of encoding/decoding composite facial images (likened to "paint by numbers") and granted judgment on the pleadings.
- On appeal, the Federal Circuit affirmed: the claims are directed to the abstract idea of encoding/decoding image data and contain no inventive concept at Alice step two to render them patent-eligible.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted claims directed to patent-ineligible subject matter under 35 U.S.C. § 101 (Alice step one)? | RecogniCorp: claims recite a specific encoding algorithm and particular encoding elements (codes, pictorial symbols) — not a mere abstract idea. | Nintendo: claims are an abstract encoding/decoding process that simply assigns and uses codes to transmit images. | Held: Claims are directed to the abstract idea of encoding and decoding image data. |
| Does the presence of a mathematical formula (multiplication) save the claims under Alice or Diehr? | RecogniCorp: use of the specific mathematical algorithm and its application distinguishes Diehr and provides patent-eligible subject matter. | Nintendo: the multiplication merely transforms data and does not add inventive concept; adding math to an abstract idea does not make it eligible. | Held: Mathematical formula does not impart eligibility here; adding math to an abstract encoding idea is insufficient. |
| Do claim limitations (facial feature element codes, pictorial symbols, claim combination) supply an "inventive concept" under Alice step two? | RecogniCorp: the ordered combination of limitations and specific encoding process provide a particularized application and inventive concept. | Nintendo: limitations describe conventional pre/post-solution activity or mere data organization; claim can be performed without a computer. | Held: No inventive concept — limitations are conventional or abstract reformatting of data and do not transform the claim. |
| Should the case survive at motion-for-judgment-on-the-pleadings stage (no claim construction)? | RecogniCorp: disputed characterization of the invention; claimed specifics require claim-level analysis. | Nintendo: the claim language itself plainly reveals abstract character and lack of inventive concept. | Held: De novo review affirms dismissal on pleadings; no plaintiff factual allegations save the claims. |
Key Cases Cited
- Diamond v. Diehr, 450 U.S. 175 (1981) (use of a mathematical formula does not automatically preclude patent eligibility when claim as a whole is a patentable process)
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes two-step test for patent-eligibility under § 101)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (2016) (software claims can be non-abstract when directed to improvements in computer functionality)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.) (2014) (found inventive concept where claim provided a particularized Internet-centric solution)
- Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.) (2014) (claims directed to organizing data via mathematical correlations are abstract)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.) (2016) (§ 101 review de novo; claims may be patent-eligible where they improve computer animation process)
- BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.) (2016) (inventive concept can sometimes be found in an ordered combination of limitations)