Tli Communications LLC v. Av Automotive, L.L.C.
823 F.3d 607
| Fed. Cir. | 2016

Background

  • TLI Communications sued multiple defendants alleging infringement of U.S. Patent No. 6,038,295, which claims methods/systems for recording, transmitting, classifying, and storing digital images (e.g., from a camera-equipped telephone to a server).
  • Representative claim 17 recites recording images on a telephone unit, transmitting images plus user-prescribable "classification information" to a server, extracting that classification data, and storing images "taking into consideration" the classification.
  • The district court dismissed under Rule 12(b)(6), holding the claims are directed to the abstract idea of taking, organizing/classifying, and storing photographs and therefore ineligible under 35 U.S.C. § 101; it also found potential § 112 ¶ 6 problems with means-plus-function claims but the court did not resolve § 112 ¶ 6 on appeal.
  • On appeal, the Federal Circuit reviewed de novo, applying the Alice two-step framework to determine patent eligibility under § 101.
  • The court concluded at Alice step one that the claims are directed to the abstract idea of classifying and storing digital images in an organized manner, and at Alice step two that the recited telephone, server, image-analysis, and control units are generic, routine computer components that add no inventive concept.
  • Because the claims were held patent-ineligible under § 101, the Federal Circuit affirmed the dismissal and did not decide the § 112 ¶ 6 issue.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Whether the ’295 patent claims patent-eligible subject matter under 35 U.S.C. § 101 Claim 17 is directed to a concrete method for recording and administering digital images using telephone and server components, an improvement in image handling Claims merely recite the abstract idea of classifying and storing images implemented using generic telephone/server components Claims are directed to the abstract idea of classifying/storing digital images and are not patent-eligible under § 101
Whether concrete hardware recitations (telephone unit, server) make the claims patent-eligible The claimed telephone and server provide a tangible, specific implementation that confers patentability The telephone and server are described generically and perform well-understood, routine functions—insufficient inventive concept Hardware recitations are generic and do not supply an inventive concept at Alice step two
Whether dependent claims adding an image analysis unit and control unit supply an inventive concept Those modules add functional, technical improvements (e.g., quality determination, resolution control) The specification describes these units only in vague, functional terms and using known techniques; no technical implementation details The image analysis and control units are functional, conventional components and do not transform the abstract idea into patent-eligible subject matter
Whether limiting the claim to a mobile telephone environment avoids abstraction TLI argued environment limitation (telephone system) gives concrete context and improves computer functionality Court: limiting to a telephone system does not avoid abstraction absent a claimed improvement to computer/technical functionality Environment limitation does not save the claims; still directed to an abstract idea

Key Cases Cited

  • Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (Sup. Ct.) (laws of nature, natural phenomena, and abstract ideas are not patentable)
  • Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (Sup. Ct.) (framework for assessing inventive concept; routine conventional activity does not confer patentability)
  • Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (Sup. Ct.) (two-step test for abstract ideas and inventive concept)
  • Diamond v. Diehr, 450 U.S. 175 (Sup. Ct.) (computer implementation must show an improvement in technology to be patent-eligible)
  • Bilski v. Kappos, 561 U.S. 604 (Sup. Ct.) (rejection of categorical rules; abstract idea analysis applies)
  • Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir.) (claims to collecting, recognizing, and storing data held abstract)
  • OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.) (claims not saved by mere computer implementation)
  • Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (distinguishing claims that improve computer functionality from those adding generic computer components)
  • Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir.) (database/communication medium are generic elements)
  • DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.) (claims that solve Internet-specific problem may be patent-eligible)
  • Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314 (Fed. Cir.) (generic computer components insufficient)
  • BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.) (mere use of network/computer to send/receive information is not inventive)
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