IP Law Daily Personal broadcasting system flunks Section 101 patent-eligibility scrutiny
Monday, December 14, 2020

Personal broadcasting system flunks Section 101 patent-eligibility scrutiny

By Jody Coultas, J.D.

The patent claims were directed to the abstract idea of collecting information and transcoding it into multiple formats.

A district court properly concluded that the claims of a patent held by Adaptive Streaming, Inc.—covering a personal broadcasting system that broadcasts a video signal to at least one device that requires a different format—were not eligible for patent protection, according to the U.S. Court of Appeals for the Federal Circuit. Adaptive’s patent was directed to the abstract ideas of encoding and decoding image data and of converting formats, including when data is received from one medium and sent along through another. There was nothing in the patent that converted the abstract idea into a patent-eligible application. The court also noted that the Patent and Trademark Office’s novelty and non-obviousness determinations, rendered in issuing the patent, did not imply eligibility. (Adaptive Streaming, Inc. v. Netflix, Inc., December 14, 2020, Taranto, R.).

U.S. Patent No. 7,047,305 (the ‘305 patent), entitled "Personal Broadcasting System for Audio and Video Data Using a Wide Area Network", claims systems that can receive a video signal in one format and broadcast it to at least one device calling for a different format. The ’305 patent states that it "provides a technique including a system for capturing audio and video information from a first source and displaying such video and audio information at a second source, where the format of the first source and the format of the second source are different from each other."

Adaptive alleged that Netflix infringed the ’305 patent. The district court held that the asserted claims of the ’305 patent were invalid under 35 U.S.C. § 101, as the subject matter was directed to the abstract idea of "collecting information and transcoding it into multiple formats." Adaptive appealed.

A patent claim falls outside the ambit of Section 101 when (1) it is directed to an abstract idea, and (2), if so, the particular elements of the claim, considered both individually and as an ordered combination, do not add enough to transform the nature of the claim into a patent-eligible application.

Abstract idea. The Federal Circuit agreed with the district court that the claims at issue of the ‘305 patent were directed to an abstract idea. The claims and written description make clear that the focus of the claimed advance is the abstract idea of format conversion, from an incoming signal’s format to a variety of formats suited to different destination devices. There was no specific advance in coding or other techniques for implementing that idea. Also, the written description explains the familiarity of translation of content—from a format (including a language) of a sender to one suited to a recipient—as a fundamental communication practice in both the electronic and pre-electronic worlds. Ideas of encoding and decoding image data and of converting formats are abstract ideas. Thus, claims focused on those general ideas governing basic communication practices were directed to abstract ideas.

Inventive concept. As to the second Alice step, the patent claims do not incorporate anything more that would suffice to transform their subject matter into an eligible application of the abstract idea, the court held. Claims 39, 40, and 42 recite only generic computer hardware, such as a "processor" and a "broadcasting server" with an "image retrieval portion," "a data structure," and a "transcoding module," as performing the claimed functions, which the ’305 patent’s specification states were conventional. Nothing in the claims required anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information." There was no identification in the claims or written description of specific, unconventional encoding, decoding, compression, or broadcasting techniques.

The case is No. 2020-1310.

Attorneys: Paul Skiermont, Alexander Edward Gasser, and Mieke K. Malmberg (Skiermont Derby LLP) for Adaptive Streaming, Inc. Michael Soonuk Kwun (Kwun Bhansali Lazarus LLP) for Netflix, Inc.

Companies: Adaptive Streaming, Inc.; Netflix, Inc.

MainStory: TopStory Patent TechnologyInternet FedCirNews GCNNews

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