Subject Matter Eligibility: “Directed to a specific means that improves the relevant technology”
Case Information:
CONTOUR IP HOLDING LLC v. GOPRO, INC.
Judges: Federal Circuit Judges Prost, Schall, and Reyna (writing)
Issues: Subject Matter Eligibility,
Overview:
Contour IP Holding LLC (“Contour”) owns U.S. Patent No. 8,890,954 (“’954 patent”) and related U.S. Patent No. 8,896,694 (“’694 patent”). The asserted patents disclose a “hands-free, [point-of-view] action sports video camera” that is “configured for remote image acquisition control and viewing.” The ‘954 patent, column 1, lines 15-17. GoPro Inc. manufactures portable cameras that capture point-of-view videos and images, popular among, for example, sports enthusiasts.
The parties agree that claim 11 of the ’954 patent was a representative claim for purposes of the subject matter eligibility inquiry (emphasis added).
11. A portable, point-of-view digital video camera, comprising:
a lens;
an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene;
a wireless connection protocol device configured to send real time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and
a camera processor configured to:
receive the video image data directly or indirectly from the image sensor,
generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,
cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera, and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,
receive the control signals from the personal portable computing device, and
adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.
The district court had granted a summary judgment to GoPro on the basis that claim 11 was not directed to patent-eligible subject matter. The district court based its decision on Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021). In Yu, phones manufactured by Apple and Samsung were accused of infringing U.S. Patent No. 6,611,289, entitled “Digital Cameras Using Multiple Sensors with Multiple Lenses.” Claim 1 was a representative claim (emphasis added):
1. An improved digital camera comprising:
a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
two lenses, each being mounted in front of one of said two image sensors;
said first image sensor producing a first image and said second image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.
The Federal Circuit held that the claims were directed to the abstract idea of using two images to enhance each other. The claims did not include a specific means or method that improves the relevant technology. The claims did not include anything about “producing a resultant digital image from said first digital image enhanced with said second digital image” that was not already conventional in the art.
Discussion
The Supreme Court's "Alice" test is used to determine whether a patent claim falls into an ineligible category. At step one of this test, courts decide if the claim is directed to an abstract idea. If it is not, the claim is patent-eligible. If it is, the inquiry moves to step two, where the court looks for elements that transform the abstract idea into a patentable invention.
At step one, the Court often examines the “focus of the claimed advance over the prior art.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The Court also determines whether the claims are directed to “a specific means or method that improves the relevant technology” rather than simply being directed to “a result or effect that itself is the abstract idea.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Here, the Court found that “generat[ing] from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream” focused on a specific technological improvement to point-of-view camera technology. That is a camera that can simultaneously record high- and low-quality video streams and wirelessly transfer the lower-quality stream to a remote device for real-time viewing and adjustment is an improvement in technology because it addresses bandwidth limitations, enhancing the camera's performance for remote viewing. The Court emphasized that the “written description discloses improving POV camera technology through specific means of generating high- and low-quality video streams in parallel and transferring a low-quality video stream to a remote device, and the claims reflect this improvement.” Thus the claim was patent subject eligible without needing to analyze the second step of the Alice Test.
Thoughts
Honestly, I think this is a borderline case. However, I think two things helped push the claim over the line.
First, the claim was specific about how the improvement in technology was accomplished. “Generat[ing] from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream” is more specific than “producing a resultant digital image from said first digital image enhanced with said second digital image.” I think one major weakness of the claim at issue in Yu is that you can append the word “somehow” to the end of the limitation: producing a resultant digital image from said first digital image enhanced with said second digital image somehow. You can’t with the claim at issue in this case: Generat[ing] from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream somehow. While I don’t think this is an observation that is guaranteed to be an absolute predictor of patent-eligible subject matter, I think it is a good “sniff” test when reviewing claims.
Second, the specification contained a paragraph that backed up the idea that the claim represented a technical advance. The specification stated that “a user can remotely view and adjust the desired recording in real-time, with the elimination of bandwidth limitations on wireless data transfer.” This reinforced the technical nature of the improvement and that the limitations of the specific claim led to this result.
