Addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit found that a patent directed to abstract subject matter, even with a mathematical formula in the patent claims, did not amount to an inventive concept sufficient to render the abstract idea patent eligible. RecogniCorp, LLC v. Nintendo Co., Ltd., et al., Case No. 16-1499 (Fed. Cir., Apr. 28, 2017) (Reyna, J).
The patent at issue relates to the encoding and decoding of image data for building a composite facial image using constituent parts. According to the patent specification, pre-existing systems stored composite facial images in file formats that required significant memory and compression resources. The subject patent encoded each facial image using a variety of image classes that required less memory and bandwidth. After RecogniCorp sued Nintendo alleging patent infringement, Nintendo filed a motion for judgment on the pleadings on § 101 grounds. Notwithstanding the absence of a claim construction ruling, the district court agreed and granted the motion, holding that the claims were patent ineligible under § 101. RecogniCorp appealed.
The Federal Circuit affirmed, finding that the patent claims were directed to an abstract idea. Regarding step one of the Alice inquiry, the Court cited its decision in Digitech (IP Update, Vol. 17, No. 8) and found no material difference between the Alice step one analysis in Digitech, where the patent claims were found to be directed to an abstract idea, and the analysis for the process recited in the challenged claims of the subject patent. In both cases, a process started with data, added an algorithm and resulted in a new form of data. The Court dismissed the patent owner’s argument that the recitation of a mathematical formula in the challenged claims rendered the patent eligible in view of Diehr, explaining that one abstract idea being added to another abstract idea as recited in the challenged claims rendered the case distinguishable from Diehr.
Regarding step two of the Alice inquiry, the Federal Circuit cited its decisions in DDR Holdings (IP Update, Vol. 18, No. 1) and BASCOM (IP Update, Vol. 19, No. 8) for guidance. In DDR Holdings, the claims at issue overcame a specific challenge unique to the internet that amounted to an inventive concept. In BASCOM, the ordered combination of claim limitations was found to satisfy the requisite inventive concept by transforming “the abstract idea of filtering content into a particular, practical application of that abstract idea.” The Court found the RecogniCorp claims distinguishable from those at issue in DDR Holdings and BASCOM, explaining that the simple addition of a mathematical formula does not transform the abstract idea of encoding and decoding into patent-eligible subject matter, nor does the application of the abstract idea with a standard computer do so. Thus, the claims were found to be patent ineligible under Alice.