The patent ruling for video cameras shows that proof of novelty is essential

Patent claims involving computer-implemented technologies are often challenged as ineligible subject matter under 35 USC Section 101. This section of the patent laws sets limits on the type of technology that is eligible for patent protection, and courts have interpreted this section to exclude “abstract patent ideas” – including some concepts in computer and software engineering.

This problem can occur when a software process is embedded in a device or system claim, even though devices and systems are physical elements and not abstract concepts. The U.S. Court of Appeals for last month’s Federal Circuit decision Contour IP Holding vs. GoPro highlights the patentability of software processes, especially data processing and transmission in video cameras.

The ruling has implications for how technology companies can protect their intellectual property. In particular, patent applications that relate to computer-implemented inventions that identify a novel, specific technological improvement are more likely to receive valuable patent protection, and the resulting patents are more likely to withstand challenges to their validity if enforced in court.

Contour IP Holding LLC and GoPro Inc. have been embroiled in a legal dispute over digital video camera patents for several years. In 2017, Contour initiated a patent infringement lawsuit against GoPro, which culminated in a 2022 ruling from the U.S. District Court for the Northern District of California. The district court granted summary judgment to GoPro, holding that the two claims at issue were not patentable under Section 101.

One of the claims considered representative of the patented invention describes a portable digital video camera system comprising various components such as a lens, an image sensor, a wireless connection protocol device and a camera processor. The camera processor performs software processes including generating two data streams (one higher quality and one lower quality) and sending the lower quality stream to a portable device for real-time viewing.

Contour appealed the summary judgment and the Federal Circuit conducted a de novo review of the issue of patent eligibility under Section 101.

The Alice Check

The 2014 US Supreme Court decision Alice Corp. against CLS Bank International established a two-tiered framework for software-related inventions for determining patent eligibility under Section 101:

Step one. Are the claims aimed at an abstract idea?

Step two. If so, do the claims contain an “inventive concept” that transforms the abstract idea into a patentable application?

In contourThe district court found that the claims centered on the abstract idea of ​​“creating and transmitting video (in two different resolutions) and remotely adjusting video settings.” The court then found that the claims merely presented functional language, without any specific inventive concept or indication that the components performed anything beyond their basic, generic functions.

The district court concluded that processes such as creating, storing, and transmitting videos were abstract concepts. According to their reasoning, the mere fact that two video streams were created did not make the claim any less abstract.

Federal Circuit Decision

On appeal, the Federal Circuit disagreed with the district court’s characterization of the claim as directed to an abstract idea. The Federal Circuit emphasized that Alice Step one: Courts must focus on specific advances over the prior art and avoid describing claims at too high a level of abstraction.

The Federal Circuit considered whether the claims were directed to “a particular means or method of improving the relevant technology” and not merely to the description of a result or abstract effect.

In this case, the court found that the claimed method – parallel data stream recording with wireless transmission of the lower quality data stream to a remote device – represented a technological improvement. The claimed invention enabled real-time viewing of point-of-view camera footage on a separate device, which was not possible with previous technology.

Yu And ChargePoint

The Federal Circuit distinguished this case from two others involving digital technologies. In Yu vs. Applethe claims concerned digital cameras, but were considered to be directed at the abstract idea of ​​”taking two images and using one to enhance the other.” The court found that this practice was a long-standing basic concept of photography and therefore an abstract idea.

As opposed to Yuthe technology in contour did not require many years of practice. GoPro did not argue that transmitting lower quality video streams for real-time playback was a familiar concept.

Likewise in ChargePoint vs SemaConnectThe claims related to communication over a network related to electric vehicle charging stations. The court found no evidence of a technical improvement to the charging station itself.

In contrast to contour This was a specific technological method that improved the underlying technology by enabling real-time video viewing from a remote device.

outlook

The contour The case highlights the importance of determining whether a claim involves a specific technological improvement and whether that improvement is achieved through a novel technological means. A court’s initial characterization of the claim may be critical in determining patent eligibility under Section 101.

The difference between contour And Yu also highlights the importance of the question of whether the claimed method represents a long-established practice in the field. Essentially, the more novel and specific the technological improvement, the stronger the argument for patent eligibility.

Technology companies are still able to obtain valuable patent protection for computer-implemented inventions, but they should be prepared to clearly identify the new technological improvements that their engineering teams have produced as they approach the patent process.

The case is Contour IP Holding LLC v. GoPro, Inc., Fed. Cir., No. 22-01654, decided 9/9/24.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Information about the author

Frank L. Gerratana is a member of the patent practice at Mintz.

Mary Bao is an associate in the patent practice at Mintz.

Write for us: Author Guidelines