By Peter Reap, J.D., LL.M.
TLI Communications’ (“TLI”) asserted U.S. Patent No. 6,038,295 (the ’295 patent) is directed to the abstract idea of classifying and storing digital images in an organized manner and fail to add an inventive concept sufficient to confer patent eligibility, the U.S. Court of Appeals for the Federal Circuit has decided (TLI Communications LLC v. AV Automotive, LLC, May 17, 2016, Hughes, T.). Because the patent failed the two-part test announced by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, (2014), a decision of the federal district court in Norfolk, Virginia, was affirmed.
TLI filed suit against numerous defendants alleging infringement of the ‘295 patent by making, selling, and/or using products and services that allow uploading of digital photos from a mobile device, such as a cell phone. The ’295 patent “relates generally to an apparatus for recording of a digital image, communicating the digital image from the recording device to a storage device, and to administering the digital image in the storage device.” More specifically, the invention teaches manually or automatically assigning “classification data,” such as a date or timestamp, to digital images and sending those images to a server. The server then extracts the classification data and stores the digital images, “taking into consideration the classification information.”
The defendants filed a motion to dismiss for failure to state a claim, arguing that the ’295 patent is drawn to patent-ineligible subject matter. The district court agreed, concluding that the claims are directed to “the abstract idea of taking, organizing, classifying, and storing photographs.” TLI appealed.
Under the now familiar two-part test described by the Supreme Court in Alice, the court “must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Id at 2355. If so, it must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id.
Alice step one. On its face, representative claim 17 is drawn to the concept of classifying an image and storing the image based on its classification. While claim 17 requires concrete, tangible components such as “a telephone unit” and a “server,” the specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner, the court noted. And the specification’s emphasis that the present invention “relates to a method for recording, communicating and administering [a] digital image” underscores that claim 17 is directed to an abstract concept.
The Federal Circuit recently clarified that a relevant inquiry at step one is “to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” See Enfish, LLC v. Microsoft Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. May 12, 2016). There, the court contrasted claims “directed to an improvement in the functioning of a computer” with claims “simply adding conventional computer components to well-known business practices,” or claims reciting “use of an abstract mathematical formula on any general purpose computer,” or “a purely conventional computer implementation of a mathematical formula,” or “generalized steps to be performed on a computer using conventional computer activity.” The claims here are not directed to a specific improvement to computer functionality, the court reasoned. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment.
The specification does not describe a new telephone, a new server, or a new physical combination of the two, the court observed. The specification fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms. Put differently, the telephone unit itself is merely a conduit for the abstract idea of classifying an image and storing the image based on its classification. Likewise, the server is described simply in terms of performing generic computer functions such as storing, receiving, and extracting data.
For these same reasons, the claims are not directed to a solution to a “technological problem” as was the case in Diamond v. Diehr, 450 U.S. 175 (1981). Nor do the claims attempt to solve “a challenge particular to the Internet.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014). Instead, the claims are simply directed to the abstract idea of classifying and storing digital images in an organized manner, the Federal Circuit determined.
Alice step two. Turning to the second step of the analysis, the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea, the appellate court ruled. As the district court concluded, the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability.
Here, the telephone unit simply provides the environment in which the abstract idea of classifying and storing digital images in an organized manner is carried out. Likewise, the server fails to add an inventive concept because it is simply a generic computer that “administer[s]” digital images using a known “arbitrary data bank system.” These fell squarely within precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.
Dependent claims 10 and 11 respectively recite an “image analysis unit for determining quality of the digital images” and a “control unit for controlling resolution of digital images.” While these units purport to add additional functionality to the server, the specification limits its discussion of these components to abstract functional descriptions devoid of technical explanation as to how to implement the invention. Such vague, functional descriptions of server components are insufficient to transform the abstract idea into a patent-eligible invention, according to the court.
Attorneys: Robert Alan Whitman (Mishcon de Reya New York LLP) for TLI Communications LLC. Mark A. Lemley (Durie Tangri LLP) for CityGrid Media LLC, IAC/InterActiveCorp, Imgur LLC, Pinterest, Inc., Shutterfly, Inc., Snapchat Inc., TripAdvisor Inc., TripAdvisory LLC, Tumblr, Inc., Twitter, Inc., Vimeo LLC, Vine Labs, Inc., and Yahoo! Inc. Joshua Bryson Brady (Williams Mullen, PC) for AV Automotive, LLC, Hall Automotive, LLC. Robert A. Angle (Troutman Sanders LLP) for Capital One Financial Corporation, Capital One, N.A., and Capital One Services, LLC.
Companies: TLI Communications LLC; CityGrid Media LLC; IAC/InterActiveCorp; Imgur LLC; Pinterest, Inc.; Shutterfly, Inc.; Snapchat Inc.; TripAdvisor Inc.; TripAdvisory LLC; Tumblr, Inc.; Twitter, Inc.; Vimeo LLC; Vine Labs, Inc.; Yahoo! Inc.; AV Automotive, LLC; Hall Automotive, LLC; Capital One Financial Corporation; Capital One, N.A.; Capital One Services, LLC
MainStory: TopStory Patent FedCirNews
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