In RecogniCorp, LLC v. Nintendo Co., Ltd., Appeal No. 2016-1499, the Federal Circuit affirmed that patent claims for encoding/decoding image data using a mathematical formula are patent-ineligible because they are directed to an abstract idea with no inventive concept.
The patent at issue was directed to a method for encoding and decoding image data using a mathematical formula for more efficient transmission. The Federal Circuit affirmed the district court’s finding that the claims were directed to patent-ineligible subject matter under 35 U.S.C. 101. Analyzing the first step of Alice, the court determined that the claims were directed to an abstract idea. The claims combined two abstract ideas: math and standard encoding/decoding of image data. The court explained that adding one abstract idea to another abstract idea does not create patent eligible subject matter.
Analyzing the second step of Alice, the court determined that the claims lacked an inventive concept that transforms the claims from an abstract idea to a patent-eligible application. The court reasoned that the claims merely used math to transform one form of data into another form of data. Moreover, the patentee failed to allege a particularized application of the image encoding/decoding claims; the claims did not even require a computer and could be practiced verbally or with a telephone.