Federal Circuit: Digital Image Patent Claims are Abstract
July 24th, 2023
The Federal Circuit has affirmed a federal district court decision that certain claims of digital imaging patents are patent-ineligible.
The case involves a dispute between the patent owner, Sanderling Management Ltd., and Snap Inc., which operates the Snapchat app.
Sanderling owns three patents sharing the title “Dynamic Promotional Layout Management and Distribution Rules,” which are directed to a method using distribution rules to load digital image branding functions to users when certain conditions are met.
As the court describes it,
The patents share a common specification, which describes the digital image branding function as a transformation, using, for example, an icon or a filter, that displays in a client terminal for the user to apply to a digital image... A distribution rule “is a rule used in determining how to target a group of end users, for instance, a rule that determines that only a group of end users having certain characteristics and/or match a certain requirement.”
As the court noted,
Patent eligibility is governed by 35 U.S.C. § 101, which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” “Laws of nature, natural phenomena, and abstract ideas” are, however, “an important implicit exception” to Section 101.
Under the US Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, there are two steps to determine whether a patent claims patent-ineligible subject matter.
First, a court must “determine whether the claims at issue are directed to one of those patent-ineligible concepts” (“step one”).
If, a court must determine whether there’s an “inventive concept” that “transform the nature of the claim into a patent-eligible application” (“step two”).
The federal circuit agreed with the district court that the patent claims were directed to an abstract idea:
Typically, as is true here, the step one analysis for computer-related inventions requires us to “ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” … The claims of the asserted patents are not directed to a specific improvement in computer functionality but, instead, to the use of computers as a tool; here, a tool to identify when a condition is met and then to distribute information based on satisfaction of that condition. As the district court articulated, in a formulation we agree with, the claims are directed to the abstract idea “‘of providing information – in this case, a processing function – based on meeting a condition,’ e.g., matching a GPS location indication with a geographic location.”
Even though the information being distributed is of a particular type – digital imaging -- the court found that distribution of information is an abstract idea.
Moving on to the second step of the Alice inquiry, a court must “look to see whether there are any ‘additional features’ in the claims that constitute an ‘inventive concept.’”
Inventive features must be more than “well-understood, routine, conventional activity.”
Said the court,
If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.
The court found that the distribution rule was just that: the application of the abstract idea using common computer components.