August 2014
Digital Image Processing Claims Held Patent Ineligible Under § 101
| Judges: Moore, Reyna (author), Hughes |
| [Appealed from C.D. Cal., Judge Wright] |
In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., Nos. 13-1600 to -1618 (Fed. Cir. July 11, 2014), the Federal Circuit held that the asserted claims of U.S. Patent No. 6,128,415 (“the ’415 patent”) were invalid under 35 U.S.C. § 101.
Digitech Image Technologies (“Digitech”) is the assignee of the ’415 patent, which is directed to “an ‘improved device profile’ that describes spatial and color properties of a device within a digital image processing system.” Slip op. at 5. Digitech filed infringement suits against thirty-two defendants, asserting claims of the ’415 patent directed to a device profile and methods for generating a device profile. Several defendants filed SJ motions seeking to invalidate the asserted claims under § 101. The district court granted the motions and found that all of the asserted claims were subject matter ineligible.
“The Supreme Court recently reaffirmed that fundamental concepts, by themselves, are ineligible abstract ideas. . . . [However, a] claim may be eligible if it includes additional inventive features such that the claim scope does not solely capture the abstract idea.” Slip op. at 10-11 (citing Alice Corp. v. CLS Bank Int’l, 573 U.S. __, No. 13-298, slip op. at 6, 10 (June 19, 2014)).
On appeal, the Federal Circuit affirmed. The Court first held that the device profile described and claimed in the ’415 patent “is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter.” Id. at 7. According to the Court, the claims described a device profile as a collection of information—two data sets, one for color and one for spatial information—and were not directed to any tangible embodiment of the information or tangible part of the digital processing system. The Court rejected Digitech’s argument that a device profile was hardware or software within a digital image processing system, explaining that the claim language did not describe the device profile as any such embodiment, but solely as data in an ethereal, nonphysical, and, thus, patent-ineligible form.
The Court next held that, although the asserted method claims undisputedly described a process, they nevertheless were directed to a patent-ineligible abstract idea. According to the Court, the claims described a process of organizing information through mathematical correlations not tied to a specific structure or machine. The Court rejected Digitech’s argument that the claim language tied the method to an image processor. Rather, the Court concluded that the mention of a digital image reproduction system in the claim’s preamble did not limit the claim scope, and, thus, the Court did not need to decide whether tying the method to an image processor would render the claims patent eligible.
The Court thus affirmed the district court’s SJ decision that the asserted claims of the ’415 patent were not patent eligible under § 101.
