Alice through the looking glass

Following the Supreme Court’s recent decision in Alice Corp. v. CLS Bank Int’l  there has been much speculation about the future of patents on computer based inventions in the US.

I previously speculated that “…a vast number of granted US patents on computer implemented inventions will turn out to be invalid if they are ever litigated…” (June 29 posting; last paragraph).

There has recently been a lot of fanfare over the CAFC’s decision in Digitech Image Technologies, LLC v. Electronics For Imaging, Inc.

The CAFC found the claims in that case invalid based upon § 101 subject matter ineligibility.

At Issue was US 6,128,415. Claim 1 of that patent recites:

 A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
                first data for describing a device de-pendent transformation of color information content of the image to a device independent color space; and

               second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

Astute readers will note (as did the CAFC)  that the claim is directed solely towards “first data” and “second data”.

Therefore, it is not surprising that the court concluded “ … asserted claims are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system.”

If the claims had recited a physical memory or tangible part of the digital processing system the court might have seen fit to invoke the Supreme Court’s analysis from  Alice Corp.

As it was, the court relied on an ancient precedent [Burr v. Duryee, 68 U.S. 531, 570 (1863) ] to remind us that “To qualify as a machine under section 101, the claimed invention must be a “concrete thing, consisting of parts, or of certain devices and combination of devices.”

For novice practitioners of the draftsman’s art, recitation of “digital image reproduction system” in the claim preamble does not serve as a claim limitation.

The court then went on to point out that:  “To qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.”  [ Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).]

This meant that the claimed invention did not belong to one of the statutory categories of invention, so that there was no need to consider “abstract idea” and “significantly more” as taught in  Alice Corp.

Perhaps most interesting is that the opinion, written by Judge Reyna, cites only two CAFC precedents:

“a claim reciting an abstract idea does not become eligible “merely by adding the words ‘apply it.’”  Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1276 (Fed. Cir. 2012).; and

“a preamble does not limit claim scope if it “merely states the purpose  or intended use of an invention.”  Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). 

In summary, the CAFC’s decision in this case is no surprise, as even the district court was able to see that the claims were not directed to patentable subject matter. What is most interesting is the almost exclusive reliance on Supreme Court precedent and the explicit recitation of all the older Supreme Court precedents mentioned in the recent Bilski, Mayo and Alice Corp decisions.

If this is the beginning of a trend, let us all hope that it will be a trend that fosters innovation.