The Court of Appeals for the Federal Circuit (the “Federal Circuit”) upheld a Patent Trial and Appeal Board (PTAB) decision holding that under 35 U.S.C. sec. 101, a claimed method for building a composite facial image using constituent parts by encoding the image at one end, classifying the encoded elements (thereby requiring less memory and bandwidth) and then at the other end decoding the image, is patent ineligible subject matter. Recognicorp LLC v. Nintendo Co., Ltd., Case No. 2016-1499 (Fed. Cir. April 28, 2017) (Available Here).
Recognicorp’s ‘303 patent is entitled ”Method and Apparatus for Encoding/Decoding Image Data.” It teaches a method and apparatus for building a composite facial image using constituent parts.
Prior to the ‘303 invention, composite facial images typically were stored in file formats such as bitmap, gif, or jpeg. These file formats require significant memory and compressing the images often results in decreased image quality. Digital transmission of these images is difficult. The ‘303 patent solves 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.
Claim 1 recites: A method for creating a composite image, comprising: [a] 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; [b] 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: [i] a composite image on a second area of the first display, wherein the composite image is associated with [ii] a composite facial image code having at least a facial feature element code and [iii] wherein the composite facial image code is derived by [iv] performing at least one multiplication operation on [v] a facial code using [vi] one or more code factors as input parameters to the multiplication operation; and [c] reproducing the composite image on a second display based on the composite facial image code.
The reexamination initiated by Nintendo focused 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) that was added to the independent claims.
The Federal Circuit stated: “Subject matter directed to laws of nature, natural phenomena, or abstract ideas is not patent-eligible. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court has established a two-step test to determine whether patent claims are directed to ineligible subject matter. In the first step, ‘we determine whether the claims at issue are directed to one of those patent-ineligible concepts.’ Id. at 2355. If the answer in step one is yes, ‘we then ask, [w]hat else is there in the claims before us?’ Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)). In other words, step two asks whether the patent claims an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298).
The Appeals Court found that claim 1 was 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.
The case was 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. A process that started with data, added an algorithm, and ended with a new form of data was directed to an abstract idea.”
RecogniCorp argued 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 pointed to the “facial feature element codes” and “pictorial entity symbols” disclosed in the ‘303 patent claims.
The Federal Circuit found that these claim elements did not transform the nature of the ‘303 patent claims into a patent-eligible application. McRO, 837 F.3d at 1312. “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. 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).”