Subject Mater Eligibility: “We may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility.”

Case Information:

MOBILE ACUITY LTD. v. BLIPPAR LTD.

Judges: Federal Circuit Judges Lourie, Bryson, and Stark (Stark Writing for panel)

Issues: Subject Matter Eligibility, Subject Matter Eligibility, and Motions to Dismiss

Summary:

In MOBILE ACUITY LTD. v. BLIPPAR LTD., the Federal Circuit affirmed the dismissal of Mobile Acuity's patent infringement claims against Blippar, ruling that the asserted patents were directed to patent-ineligible subject matter. The court agreed that the patents described an abstract idea without providing specific technical details or improvements. Mobile Acuity's argument that its inventive concept transformed the claims into patent-eligible subject matter was rejected. The court emphasized that merely using result-oriented, functional language does not meet the requirements for patent eligibility.

Overview:

Both Mobile Acuity and Blippar are UK-based companies in the Augmented Reality (AR) space that specialize in generating and experiencing AR content on mobile devices. Both companies seemed to have struggled (Blippar, public information about the current status of Mobile Acuity seems scarce (its URL does not resolve)). 

Mobile Acuity sued Blippar for infringement of U.S. Patent Nos. 10,445,618 (“’618 patent”) and 10,776,658 (“’658 patent”) (collectively, the “Asserted Patents”), both entitled “Storing Information for Access Using a Captured Image.” The Asserted Patents described methods to associate information with real-world locations and objects,” ’618 patent at 1:21-28, 4:28-29, 50-51. According to the Asserted Patents, in the prior art the desire to “attach information to locations in the real world” was “achieved by using barcodes or RFID tags attached to real-world objects or by associating information with absolute positions in the world.” Id. The Asserted Patents eschew the prior art methods by describing an originating user using “a mobile imaging device . . . to capture an image of a location,” and then “upload [the captured image] . . . to [a] server.” Id. The original user defines a feature within the image and the server creates a key that associates digital content with that feature. Id. at 4:56-58. Subsequently, the server provides access to the digital content when an uploaded image has that feature. Id. at 4:62-66.

For the appeal, independent claim 9 of the ’618 patent was considered representative (emphasis added):

A method of storing user-defined information for future access by multiple parties comprising, at a server controlled by a third party: 

receiving from a first originating party user defined information that is defined by the first originating party and is for access by multiple parties; and 

associating the user-defined information received from the first originating party and at least a first portion of a first image in a database, wherein the user-defined information augments first user-defined information already associated at the server with at least the first portion of the first image in the database; and 

providing access by a second party to the user defined information and the first user-defined information, when a second image, captured by the second party, includes a portion corresponding to at least the first portion of the first image.

The trial court granted Blippar’s motion to dismiss. The Federal Circuit affirmed the dismissal.

Discussion

Mobile Acuity made several arguments as to why the grant of the motion to dismiss was an error. I will discuss them in a different order than the Court addressed them.

A. Are the Claims of the Asserted Patents Directed to Patentable Subject Matter? (No)

Under the Supreme Court’s subject matter eligibility framework,  there are two steps to the subject matter eligibility analysis (sometimes referred to as the “Alice Test”). First, the court considers whether the claims are directed to a patent-ineligible concept. Second, if they are, then the court determines whether the claims contain additional elements that transform the nature of the claim into a patent-eligible claim. (This is a very simplified explanation of the Alice Test.)

The Court provides a straightforward discussion of why the claims are directed to patentable ineligible subject matter. The Court agreed with the district court that the claims were “directed to the abstract idea of receiving information, associating information with images, comparing the images, and presenting information based on that comparison.” The Court points out that the claims were merely “result-oriented, functional language and omit any specific requirements as to how these steps of information manipulation are performed.” The Court emphasized that it has “frequently held [that] claims reciting generalized steps of collecting, analyzing, and presenting information, using nothing other than the conventional operations of generic computer components, are directed to abstract ideas. Looking at the claims of the Asserted Patents, this is not a surprise. Searching for more, the Court provided an example of what was wrong and what possibly could have saved the claims. Namely, the Court pointed out that determining that “a second image… includes a portion corresponding to at least the first portion of the first image” does not provide details as to how the “corresponding” portions of images are determined.

Mobile Acuity argued that its inventive concept that transforms the nature of the claim into a patent-eligible claim is “using [an] object (or location) itself as the trigger for leaving information to be collected in the future.” The Court dismissed this argument by stating that “the abstract idea “cannot supply the inventive concept that renders the invention ‘significantly more’ than that abstract idea at step two.” Simio, LLC v. FlexSim Software Prod., Inc., 983 F.3d 1353, 1364 (Fed. Cir. 2020) (“We may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility.”). With that, the Court upholds that the claims are invalid.

B. Is Patent Eligibility an Affirmative Defense (Yes) and Can Affirmative Defenses be Used to Dismiss a Case (Yes)

An affirmative defense is a defense that, even if the plaintiff can prove that the defendant committed the alleged acts, negates criminal liability. For example, if Blippar successfully were to argue that the claims of a patent were ineligible under 35 U.S.C. § 101, it would not matter if Blippar infringed on those claims. The Court had previously ruled that patent eligibility is an affirmative defense. An affirmative defense may be the basis for granting a motion to dismiss when the affirmative defense “clearly appears on the face of the pleading.” The question that the Court asked is whether the lack of patentable subject matter is apparent on the face of the complaint (to which the Asserted Patents are included). This comes with two caveats: (1) sometimes the patent eligibility inquiry may contain underlying issues of fact that need to be evaluated by a finder of fact, see Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018),  and (2)  “[w]hether the claim elements or the claimed combination are well-understood, routine, or conventional is a question of fact.” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018).

Thoughts

I’m going to sound like a broken record: patent claims that use result-oriented, functional language and omit any specific requirements are not going to be patent-eligible. The Court looks for specificity that provides enough detail to show how the claims provide a technical improvement. Computers generally analyze, associate and provide data. Patently speaking, the specific nature of data or how that data comes to be is meaningless. You need a specific algorithm, a specific system, or a specific arrangement of parts to define patentable subject matter.