RECOGNICORP, LLC, Plaintiff-Appellant v. NINTENDO CO., LTD., Nintendo of America, Inc., Defendants-Appellees
2016-1499
United States Court of Appeals, Federal Circuit
Decided: April 28, 2017
855 F.3d 1322
CONCLUSION
We hold that the Veterans Court has the authority to establish a class action mechanism or other method of aggregating claims. We reverse the Veterans Court‘s contrary decision and remand for the Veterans Court to determine whether a class action or other method of aggregation would be appropriate here.
REVERSED AND REMANDED
COSTS
Costs to Mr. Monk.
was “at a minimum, not clearly incorrect.” Adeyi v. McDonald, 606 Fed. Appx. 1002, 1004 (Fed. Cir. 2015). To the extent these prior non-precedential rulings diverge from our holding today, any perceived conflict is superseded by today‘s precedential authority.
MARK S. PARRIS, Orrick, Herrington & Sutcliffe LLP, Seattle, WA, argued for defendants-appellees. Also represented by DONALD E. DAYBELL, Irvine, CA; MARC SHAPIRO, New York, NY; WILL MELEHANI, San Francisco, CA.
Before LOURIE, REYNA, and STOLL, Circuit Judges.
RecogniCorp sued Nintendo for patent infringement. The district court found that RecogniCorp‘s patent claims ineligible subject matter and, based on that finding, granted Nintendo‘s motion for judgment on the pleadings. RecogniCorp appeals. The 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 patent eligible. Therefore, we affirm.
BACKGROUND
1. The ‘303 Patent
U.S. Patent No. 8,005,303 (“‘303 patent“) patent is entitled “Method and Apparatus for Encoding/Decoding Image Data.” J.A. 17. It teaches a method and apparatus for building a composite facial image using constituent parts. See, e.g., J.A. 27 (col. 1 ll. 30-56 and col. 2 ll. 19-28); J.A. 28 (col. 4 ll. 35-45).
Prior to the invention disclosed in the ‘303 patent, composite facial images typically were stored in file formats such as “bitmap,” “gif,” or “jpeg.” But these file formats required significant memory, and compressing the images often resulted in decreased image quality. Digital transmission of these images could be difficult. The ‘303 patent sought to solve this problem 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.
For purposes of this appeal, we find amended claim 1 to be representative.1 It recites:
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.
J.A. 35 (US 8,005,303 C1, col. 1 ll. 23-40) (Reexamination Certificate for ‘303 patent).
2. District Court Litigation and Reexamination
The ‘303 patent issued on August 23, 2011. J.A. 17. It later was assigned to RecogniCorp, LLC (“RecogniCorp“). In 2012, RecogniCorp filed suit in the United States District Court for the District of Oregon against Nintendo Co., Ltd. and Nintendo of America, Inc. (together, “Nintendo“) for infringement of several claims of the ‘303 patent. J.A. 49, 196. In 2012, the case was transferred to the United States
The district court stayed the case in 2013 pending a reexamination by the United States Patent and Trademark Office (“PTO“). The reexamination focused on obviousness and resulted in several amended claims, including claim 1. See J.A. 35. The amended claims all contain similar language regarding multiplication operations. Specifically, the limitation “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” (or a limitation substantially identical) was added to the independent claims. J.A. 4. In light of these amendments, the PTO issued a reexamination certificate for the ‘303 patent. Upon completion of the reexamination in 2014, the district court lifted the stay.
In March 2015, Nintendo filed a motion for judgment on the pleadings, asserting that the claims were ineligible under
In December 2015, without issuing a claim construction ruling, the district court granted Nintendo‘s motion. At Alice 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.” J.A. 8. According to the district court:
[The claims] boil down to: (1) displaying potential input variables (the facial features and their modifications), (2) selecting and manipulating the inputs, (3) deriving an output code by performing a “multiplication operation” on the inputs, and (4) outputting the original inputs on another device by performing the sequence in reverse on another device.
J.A. 8. The district court analogized the process to “paint by numbers.” J.A. 8.
At Alice step two, the district court found that the ‘303 patent contains no inventive concept. J.A. 11. 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.” J.A. 14 (quotation marks, citations, and alterations omitted). Based on these findings, the district court granted Nintendo‘s motion for judgment on the pleadings.
RecogniCorp timely appeals. We have jurisdiction under
DISCUSSION
1. Standard of Review
We review procedural aspects of motions for judgment on the pleadings us
2. Analysis
A. Alice Step One
Under the first step of Alice, we decide whether the claims are directed to ineligible subject matter, such as an abstract idea. McRO, 837 F.3d at 1312; Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The inquiry often is whether the claims are directed to “a specific means or method” for improving technology or whether they are simply directed to an abstract end-result. McRO, 837 F.3d at 1314. If the claims are not directed to an abstract idea, the inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017).
While “generalized steps to be performed on a computer using conventional computer activity” are abstract, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016), not all claims in all software patents are necessarily directed to an abstract idea, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). For example, we have held that software patent claims satisfy Alice step one when they are “directed to a specific implementation of a solution to a problem in the software arts,” such as an improvement in the functioning of a computer. Enfish, 822 F.3d at 1338-39.
We find that claim 1 is directed to the abstract idea of encoding and decoding image data. 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. See J.A. 35 (col. 1 ll. 23-40). This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information. Cf. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-41 (Fed. Cir. 2017) (organizing, displaying, and manipulating data encoded for human- and machine-readability is directed to an abstract concept). Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere‘s “one if by land, two if by sea” signaling system all exemplify encoding at one end and decoding at the other end. Even the ‘303 patent describes “a common technique for synthesizing single images of faces involv[ing] horizontally dividing the image of a face into bands for different features,” such that “[p]aper strips containing exemplary features [can] then be combined to form a composite drawing of a face.” J.A. 27 (col. 1 ll. 37-43).
RecogniCorp invokes Diamond v. Diehr, 450 U.S. 175 (1981), to support its argument that claiming the use of a mathematical formula does not necessarily render a patent ineligible. RecogniCorp is correct. In Diehr, the Supreme Court held that despite a method claim‘s recitation of a mathematical formula, “a physical and chemical process for molding precision synthetic rubber products falls within the
RecogniCorp argues that, as in Enfish, “the district court mischaracterized the invention using an improperly high level of abstraction that ignored the particular encoding process recited by the claims.” Appellant‘s Op. Br. 11. In Enfish, we warned that “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to
This case is similar to Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). There, the claims of the challenged patent were directed to the abstract idea of organizing information through mathematical correlations. Id. at 1350-51. We explained that the claim at issue “recites a process of taking two data sets and combining them into a single data set” simply by organizing existing data into a new form. Id. at 1351. A process that started with data, added an algorithm, and ended with a new form of data was directed to an abstract idea. Id. 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.
We proceed to the second step of Alice because the ‘303 patent claims are directed to an abstract idea.
B. Alice Step Two
In step two of the Alice inquiry, we search for an “‘inventive concept’ sufficient to ‘transform the nature of the claim into a patent-eligible application.‘” McRO, 837 F.3d at 1312 (quoting Alice, 134 S.Ct. at 2355). To save a patent at step two, an inventive concept must be evident in the claims. See Alice, 134 S.Ct. at 2357 (“[W]e must examine the elements of the claim to determine whether it contains an ‘inventive concept.‘” (emphasis added)); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The
RecogniCorp argues that the claims of the ‘303 patent contain an inventive concept sufficient to render them patent-eligible. Specifically, it contends that the combination of claim elements, i.e., the “particular encoding process using the specific algorithm disclosed” in the patent “transforms” the abstract idea into a patentable invention. RecogniCorp also points out the “facial feature element codes” and “pictorial entity symbols” disclosed in the ‘303 patent claims. We find that these claim elements do not transform the nature of the ‘303 patent claims into a patent-eligible application. McRO, 837 F.3d at 1312.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), we found that the patent
In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), 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.” Id. at 1352. We found the allegation sufficient to survive a motion to dismiss, where all facts had to be construed in the patent owner‘s favor. Id. Here, RecogniCorp has not alleged a particularized application of encoding and decoding image data. Indeed, claim 1 does not even require a computer; the invention can be practiced verbally or with a telephone. J.A. 28 (col. 4 ll. 59-63); J.A. 32 (col. 11 ll. 53-59). 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. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015).
In sum, the claims of the ‘303 patent lack an inventive concept that transforms the claimed subject matter from an abstract idea into a patent-eligible application. Alice, 134 S.Ct. at 2357.
CONCLUSION
The claims of the ‘303 patent are directed to encoding and decoding image data, an abstract idea. The claims provide no inventive concept to render them eligible under
AFFIRMED
COSTS
No costs.
NICHIA CORPORATION, Plaintiff-Appellant v. EVERLIGHT AMERICAS, INC., Everlight Electronics Co., Ltd., Defendants-Cross-Appellants Zenaro Lighting, Inc., Defendant
2016-1585, 2016-1618
United States Court of Appeals, Federal Circuit.
Decided: April 28, 2017