In precedential decision, Federal Circuit rules patent directed to encoding and decoding image data is not patent-eligible

By John M. Rogitz
May 2, 2017

Judge Reyna

On April 28, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in RecogniCorp, LLC v. Nintendo Co., Ltd. (2016-1499) that certain claims in RecogniCorp’s patent were not patent-eligible because they recited an abstract idea.

The Federal Circuit panel consisted of Judges Lourie, Reyna, and Stoll.  Judge Reyna delivered the panel’s opinion.

Procedurally, RecogniCorp sued Nintendo for infringement of U.S. Patent No. 8,005,303.  The district court found that RecogniCorp’s patent claimed ineligible subject matter and, based on that finding, granted Nintendo’s motion for judgment on the pleadings. RecogniCorp then appealed, and the Federal Circuit affirmed that the patent’s claims were directed to an abstract idea.  Specifically, the Federal Circuit held that the patent’s claims were directed to the abstract idea of encoding and decoding image data.

The patent itself was directed to building a composite facial image using constituent parts.  Its representative claim recited the following:

  1. A method for creating a composite image, comprising:

displaying facial feature images on a first area of a first display via a first device associated with the first display, wherein the facial feature images are associated with facial feature element codes;

selecting a facial feature image from the first area of the first display via a user interface associated with the first device, wherein the first device incorporates the selected facial feature image into a composite image on a second area of the first display, wherein the composite image is associated with a composite facial image code having at least a facial feature element code and wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters to the multiplication operation; and

reproducing the composite image on a second display based on the composite facial image code.

Under step one of the abstract idea analysis set forth by the U.S. Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit held that the claim above was directed to the abstract idea of encoding and decoding image data.  According to the panel, the claim recited “a method whereby a user displays images on a first display, assigns image codes to the images through an interface using a mathematical formula, and then reproduces the image based on the codes… This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.”

Interestingly, the Federal Circuit then analogized the encoding and decoding from RecogniCorp’s claim to things such as Morse code and a rather famous part of Revolutionary War history: “Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end. Even the ’303 patent describes ‘a common technique for synthesizing single images of faces involv[ing] horizontally dividing the image of a face into bands for different features,’ such that ‘[p]aper strips containing exemplary features [can] then be combined to form a composite drawing of a face.’”

The Federal Circuit went on to note under step one that RecogniCorp’s Claim 1 differed from the invention in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) because, unlike Enfish’s invention, Claim 1 did not recite a software method that improved the functioning of a computer but instead recited a process “for which computers are invoked merely as a tool.”

The Federal Circuit then moved on to step two of the Alice abstract idea analysis, which is whether the claim recites an “inventive concept” sufficient to transform the nature of the claim into a patent-eligible application.  In this case, the Federal Circuit held that the elements of RecogniCorp’s claim did not transform the “nature” of it into a patent-eligible application.  Instead, the addition in Claim 1 of a mathematical equation “simply changes the data into other forms of data”.  It, therefore, did not contain an inventive concept similar to that from DDR Holdings, LLC v., 773 F.3d 1245 (Fed. Cir. 2014), in which a particular Internet-centric problem had been solved.  Claim 1 also did not recite a particular and practical application for its encoding and decoding of image data that would render it analogous to the claims in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).

In fact, when discussing those cases the Federal Circuit went so far as to note that Claim 1 “does not even require a computer” and “the invention can be practiced verbally or with a telephone.”  Even where RecogniCorp’s Claim 36 recited use of a computer, “it does exactly what we have warned it may not: tell a user to take an abstract idea and apply it with a computer.”

The Author

John M. Rogitz

John M. Rogitz is a registered patent attorney with his own practice in San Diego, CA. His background includes preparation and prosecution of a large number of patent applications for high-tech Fortune 500 companies in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. He writes frequently for various publications on developments in patent law and also lectures on intellectual property for DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, he worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 60 Comments comments.

  1. Anon May 2, 2017 12:21 pm

    How is this panel decision not constrained by previous panel decisions?

  2. Arby May 2, 2017 12:49 pm

    It seems more and more that software method claims fare better under 101 if they specifically recite the beneficial result of the method steps as the particular and practical application described in Bascom.

  3. Appearance of ... May 2, 2017 1:15 pm

    As a practicing patent attorney, I have just one question: What types of dice do the Federal Circuit use, and how many?

  4. Curious May 2, 2017 1:46 pm

    What types of dice do the Federal Circuit use, and how many?
    Probably a single D20. If you get a 20, your claims are patent eligible — if not, your client just wasted years and many hundreds of thousands of dollars (if not millions) on a technology that is going to be stolen by everybody else.

    Welcome to the 21st century — if you have a highly technical invention, the Federal Circuit will call it an “abstract idea” and your patent is for naught. However, if your claim happens to recite a nail, a screw, or some other centuries-old “physical” technology, then the patent system welcomes you with open arms.

    This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.
    Why is it the Federal Circuit have a problem recognizing this line from the Supreme Court in Alice: “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas … an invention is not rendered ineligible for patent simply because it involves an abstract concept.” In reading the claim, it was not “directed to” encoding and decoding.

  5. elwoodhayes May 2, 2017 3:31 pm

    Was the opinion written by Lewis Carroll? Or maybe Jed Clampett? “All that facial coding and key location selection, multiplication by selected code factors, and the production of a combined image is a bunch of technical hooey that us regular folk don’t understand. It’s just the same thing as looking at a picture and ordering my daily Egg McMuffins.” It’s not real, like an actual Egg McMuffin….

  6. angry dude May 2, 2017 3:59 pm

    Here we go again…

    What kind of weed were they smoking when writing this “opinion”?

    I don’t have time to read this patent – it very well may be invalid BUT not for the reason they cited (e.g. it might be not new, obvious or not enabled in the spec)

    The doc said ‘to the morgue’, to the morgue it is!

  7. Night Writer May 2, 2017 4:35 pm

    >> Paul Revere’s ‘one if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end.

    What we are dealing with is two people plus Lourie that pledged to burn the patent system down (or get it under control) in exchange for their appointments. Google selected and promises to burn it down.

    So, we people as judges that are little better than criminals, Stoll and Reyna, as judges.

  8. patent leather May 2, 2017 5:57 pm

    Good ‘ol Judge Reyna sure can’t write anything but a superficial opinion. so many points in this opinion that are oversimplified and don’t really make sense. Here the discussion of Alice step II is really deficient. This patent survived a reexamination yet it contains “no inventive concept.” The part of the opinion that distinguishes between Bascom and DDR is conclusory and contains no tangible reason or doctrine why this case is different and is just a bunch of useless dicta. To characterize the DDR holding as simply saying that claims are eligible if they recite “Internet-centric problems” shows a real non-understanding of the issues.

  9. B May 2, 2017 6:37 pm

    Generally, I pull the briefs of every CAFC 101 decision to see what works. At the end of the day, it appears that briefs stressing specific advantages to long-standing problems while playing down the computer aspects (see Trading Tech) works. Unfortunately, the CAFC is technically ignorant and a tad too convinced of their knowledge of technical issues

  10. patent leather May 2, 2017 7:09 pm

    B, that’s an interesting point. it might be wise when drafting new applications to emphasize that there is a long-standing technical problem that the invention has been designed to solve.

  11. Curious May 2, 2017 7:55 pm

    emphasize that there is a long-standing technical problem that the invention has been designed to solve
    From Bilski — This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature
    has not expressed.’
    I don’t recall 35 USC 101 having a condition that the claims are directed to solving a long-standing technical problem. The invention is to be new and useful OR directed to an improvement. There is no requirement that the invention MUST be an improvement.

    These judges have long forgotten the maxim of “if in doubt, look at the statute.”

  12. JIMAFMAFA May 2, 2017 8:49 pm

    ” In reading the claim, it was not “directed to” encoding and decoding.”

    But it is exactly directed to encoding and decoding. You take an image, create a code corresponding to that image (encode), and then use the code to reproduce the image (decode). The main limitations are that the image is selected by a user via a user interface, and that the encoding step involve multiplication of any number times any number. If this is not directed to encoding and decoding, then what is it directed to?

  13. JIMAFMAFA May 2, 2017 8:58 pm

    “” In reading the claim, it was not “directed to” encoding and decoding.””

    Plus, the title of the patent is “Method and apparatus for encoding/decoding image data”, so its not much of a stretch to say that claims of said patent are directed to encoding/decoding image data.

  14. Ternary May 2, 2017 9:32 pm

    “This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.”

    Standard encoding? There is line-coding, error-correcting coding, encryption coding, compression coding, interface coding, codebook based coding, signature coding, modulation coding and so on, and of which each has hundreds if not thousands of different algorithms. Each coding technique and application performed by a machine has its own parameters and sets of advantages, disadvantages, actual cost, complexity and cost in memory, processor time and bandwidth, error and noise sensitivity and more.

    There is no such thing as standard coding. That is: you cannot ask from a person of ordinary skill to “standard encode and transmit” information. Well, you can probably ask.

  15. angry dude May 2, 2017 10:43 pm

    H.264/MPEG-4 video coding is the current standard (highly technical and very complex)
    It’s been implemented in software, hardware, firmware, you name it ware… in zillions of devices on this planet
    There are great many patents involved and there is absolutely NOTHING abstract about them

    We have deep incompetence problems in all branches of federal government
    Combined with corruption it is a death sentence to patent system

    The doc said ‘to the morgue’, to the morgue it is!

  16. Ron Katznelson May 3, 2017 4:17 am

    This is not necessarily incompetence at the Federal Circuit – they just apply the nonsense that was handed down from SCOTUS. For decades, that court refused to define “Abstract idea.” Every invention is first conceived in the abstract.

    Clearly, there is nothing unique to this RecogniCorp’s claim that compels the designation of “encoding and decoding image data” as the “abstract idea.” What prevents a court from choosing a different “abstract idea” for this case? Why not start in Step 1 with “displaying facial feature images” as the “abstract idea”? Would the analysis produce the same result? I suspect not.

    Any concept can be characterized as an “abstract idea” or a combination of “abstract ideas.” SCOTUS set no limit to how many “abstract ideas” can be found in a claim. Consider this example of an Alice two-step test that can defeat every claim from being patent-eligible:

    Step1: Feature A of the claim is drawn to an abstract idea; feature B of the claim is also drawn to another abstract idea; …. ; and the last feature X is drawn to yet another abstract idea.
    Step2: The remainder “considered alone or in combination” does not “amount to significantly more,” because there is nothing left in the claim.

    Now, show me why such analysis is inconsistent with SCOTUS’ “jurisprudence” in Mayo/Alice? Where did SCOTUS limit the choices for determining which and how many “abstract ideas” can be found in any claim? There is no limit to the arbitrary mischief with this “abstract idea” nonsense.

  17. Anon May 3, 2017 6:20 am

    The “Gist/Abstract” sword used as Ron described was pointed out by yours truly immediately after the “gift” of that sword from the Supreme Court.

    Another commentator, Paul Cole remarked that “no, a careful application of the sword would not cause such damage. I was skeptical ( 😉 ) of this noted “carefulness” and told Paul so.

    This then is yet another sad occasion to say “I told you so.”

    The problem at base is the Supreme Court.

    They must be removed from the non-original jurisdiction of patent appeals.

    Their infection has indeed metastasized in the CAFC. That Article III body must be eliminated and a new and untainted Article III court created to apply the laws as written by Congress and not the scrivened, re-written laws as written by the Supreme Court.

  18. EG May 3, 2017 6:45 am

    What see here in RecogniCorp is another “poster child” for what happens when the courts generally, and SCOTUS specifically, stray from the express language of the patent statutes generally and 35 USC 101 specifically. The nonsensical, illogical, and broken wrong Mayo/Alice framework must go, and go immediately. And as Ron Katznelson correctly notes, the Federal Circuit is simply trying follow what SCOTUS has impermissibly and disingenuously done, including refusing to define what it means by an “abstract idea” so that us “mere mortals” can even rationally and consistently apply this illogical, and broken wrong Mayo/Alice framework.

  19. EG May 3, 2017 7:48 am

    As someone commented on that other so-called patent blog with respect to the U.S. Trade Representative Special 301 report, it would ironic (yet appropriate) if one of those countries on that Special 310 list brought an action in the International Court in the Hague for violation of TRIPS because of SCOTUS’ Mayo/Alice framework. Indeed, one of the amicus briefs from Europe said as much in support of Sequenom’s failed petition for cert, noting that Sequenom’s claims had passed must in Canada, Europe, Japan and Australia without batting an eye at the patent-eligibility issue. As that commentor also noted, I suspect that Congress in response to such an action would fix 35 USC 101 PDQ. Frankly, SCOTUS is an embarrassment when it comes to patent law, and I heartily concur in Anon’s call for jurisdiction-stripping.

  20. EG May 3, 2017 7:50 am

    Oops, it should read “muster” not — must– in line 6 of my prior comment.

  21. Anon May 3, 2017 8:18 am

    The not-so-hidden problem, EG, with any such Supreme Court writing that “so that us “mere mortals” can even rationally and consistently apply this [_] Mayo/Alice framework.” will be deemed by that scrivening Court to be merely the artful dodging and scrivening by applicants and their attorneys to “get around” the desired Ends of the Court.

    They cannot write to a bright line, because the “better scriveners” would use that same bright line to “get more than the Court feels that they should get.”

  22. Curious May 3, 2017 9:07 am

    Now, show me why such analysis is inconsistent with SCOTUS’ “jurisprudence” in Mayo/Alice?
    It is inconsistent because SCOTUS framed the issue as the “patent claims” being “directed to” an abstract idea — not involving an abstract idea. The Federal Circuit errs (IMHO) by taking the claims, piecemeal, and then asserting that each element is an abstract idea while failing to consider the claimed invention, as a whole.

    Granted, the Supreme Court’s decision in Alice is exceptionally loose, which is why the Federal Circuit can get away with what they are doing. For example, the Supreme Court didn’t kill the MoT test — they called it an important and useful clue. However, the MoT test has been completely abandoned by the Federal Circuit.

    I know there are some that dislike the MoT test, but it was one of the “bright lines” I could work with for 99.99% of what I do.

    There is plenty in Alice to work with (despite my dislike of the decision) to find error in the Federal Circuit’s decision. We just need the Supreme Court to take on another case and be more precise with their language this time around.

  23. Night Writer May 3, 2017 10:01 am

    @14: Ron Katznelson

    This is case has the logical structure of: Claims are directed to an abstract idea A. A does not match any of our other cases where we found something more, so A does not have something.

    The logical structure of this precludes the possibility that A has a new something more. In other words, any innovation could never be patentable under this case as it does not match a previous pattern.

    (Although, I do agree that at some level Alice is equity and permits any claim to be invalidated ’cause the judge says so. Face it we are dealing with people that little better than kings and queens of old where you go before them and they decide based on what they feel like. No law. I think this sets us back to before the 10 Commandants where we are no longer a nation of laws, but the powerful that judge. Such vile people. )

  24. Night Writer May 3, 2017 10:07 am

    I think that any patent reform necessitates eliminating the CAFC. It is stacked with Google selected judges that were selected for their willingness to burn the patent system down and their unabashed desire to be anti-patent judicial activists.

  25. Night Writer May 3, 2017 10:10 am

    @14: Ron Katznelson >>There is no limit to the arbitrary mischief with this “abstract idea” nonsense.

    That is right. I know it sounds out there, but I think Alice is really treason. I think it ends the era of a nation of laws. It is therefore treason and a reason to impeach each of the justices. I know that sounds out there. But, think about it. The core of our civilization is that laws are supposed to rein supreme–not a man or woman.

    Think about. Saying Alice is treason is not really out there.

  26. Paul F. Morgan May 3, 2017 10:41 am

    Thanks for the hotlink to the patent. This seems like another case which should have been an application 112 final rejection [after three continuations and a CIP] for the spec having no algorithm or software teaching of how to accomplish the purely functional end result claims. [For something difficult to actually accomplish.]
    Alice based preliminary motions in litigation are being used instead because the PTO does not do so and the Fed. Cir. typically demands a full blown trial on all statutory validity issues, rejecting summary judgement motion grants.

  27. Night Writer May 3, 2017 11:13 am

    Paul Morgan >>> Alice based preliminary motions in litigation are being used instead because

    This is like an admission of impeachable conduct.

  28. Anon May 3, 2017 12:01 pm

    Night Writer,

    At the very least, it creates the perception that Mr. Morgan is “ok” with the purposeful misuse of the law by the judicial branch in order to arrive at that branch’s desired Ends.

    One of the duties of attorneys is to protect the Constitution and that does not mean placing the judicial branch above the Constitution – rather, when that particular branch is acting contrary to the separation of powers and in a manner noxious to the Constitution, we as attorneys have a duty to take issue with the Court.

  29. Independent Inventor May 3, 2017 12:11 pm

    Ron @ 14:

    As the Supreme Court clearly, explicitly, and unambiguously repeatedly instructs in Alice, Mayo, and Bilski (noting just one stated idea / concept in each Court decision with said one idea / concept being directed to all the claims at issue):

    “We hold that the claims at issue are drawn to the abstract idea of intermediated settlement …” Alice at 2352

    “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice at 2355

    “We must first determine whether the claims at issue are directed to a patent ineligible concept.” Alice at 2355

    “The claims at issue in Bilski described a method for hedging against the financial risk of price fluctuations.” Alice at 2355

    “It follows from our prior cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea.” Alice at 2356

    “Because the claims at issue are directed to the abstract idea of intermediated settlement …”Alice at 2357

    “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Mayo at 1296-1297

    Enough is enough. There’s no confusion here. No subjectivity. No uncertainty. No gray area. No interpretation.

    The Supreme Court said what it means and means what it says:

    One abstract idea. All the claims at issue.

    One can’t be identified? Then the claims are § 101 eligible. The Alice / Mayo analysis stops there. Step two is moot.

    Simple as that.

    Any contrary decisions — and we’ve all seen some — are legally wrong.

  30. Anon May 3, 2017 12:50 pm


    What does “abstract” mean as used by the Court?

    Remember – they explicitly refrained from using even a common dictionary definition of the term.

    Sorry friend, but the express attempt by the Court to NOT provide clarity on this point renders your attempted point moot.

    “Know it when I see it” fails to provide the necessary legal certainty that even a law-written-from-the-bench still requires under our Constitution.

  31. Ternary May 3, 2017 12:57 pm

    The decision itself states:
    “… these file formats required significant memory, and compressing the images often resulted in decreased image quality. Digital transmission of these images could be difficult. The ’303 patent sought to solve this problem by encoding the image at one end through a variety of image classes that required less memory and bandwidth, and at the other end decoding the images.”

    This quotation from the background in the decision explains convincingly, right from the bat, why this is directed to a technical solution, not an abstract idea. (less memory and bandwidth, better image quality). The 180 degrees change in the decision compared to the court’s own initial analysis, which is a complete contradiction truly baffles me. It is not merely that Alice is bad, but how it is applied in an utterly arbitrary, inconsistent and contradictory way that is stunning. It makes you wonder if the judges have read their own decision.

  32. Anon May 3, 2017 2:27 pm

    If they are not even bothering to read their own case, how is the panel going to read any other panel decision, and what exactly is “different” in this panel decision that merits a precedential distinction to something that (perhaps) has already been decided by another panel (to which this decision, not being an en banc decision lack the power to change)?

    There appears to be a serious break down in patent jurisprudence (and in my mind is directly traceable to the “simians firehosed in a cage” treatment – the judges are learning the wrong lessons from the Supreme Court).

  33. gene May 3, 2017 3:18 pm

    the patent drafter did not care about “. . . the spec having no algorithm or software teaching of how to accomplish the purely functional end result claims” because the patent drafter tried the software for 5 minutes and then proceeded to write the spec and claims. and, oh yeah, throw in a multiplication step to evidence its technical non-abstract nature.

  34. Ternary May 3, 2017 11:35 pm

    Re: 33 Where is running the software for 5 minutes coming from? Why would a patent drafter try software? And how is that relevant?

    The multiplication is probably the weakest step in view of Alice and in my personal opinion does not provide a strong argument against an “abstract idea” rejection, but rather seems to invite such a rejection.

    I see no arguments in 33 why an “abstract idea” rejection was appropriate. I only read a disapproval of the invention or at least disapproval of the patent drafter.

  35. Night Writer May 4, 2017 8:18 am

    Paul Cole > This seems like another case which should have been an application 112 final rejection [after three continuations and a CIP] for the spec having no algorithm or software teaching of how to accomplish the purely functional end result claims. [For something difficult to actually accomplish.]

    Again, just nonsense. I am so sick of hearing stuff like this. 112 has no requirement for an “algorithm.” The CAFC made this up. This is not based on a requirement from a skilled person in the art. Totally fabricated.

    I am skilled in the art of computer science and actually was the algorithms teaching assistant for several years at one of the top 5 computer science graduate programs. You do not need to actually write an algorithm to describe the method to a person of ordinary skill in the art. This is a judicially created (by judges that know nothing of technology) and was not even based on expert testimony.

    Judicial activism at its worst being regurgitated.

  36. Night Writer May 4, 2017 9:31 am

    Also, the CAFC should be impeached for the stuff they spout. Changing an algorithm used in an encoding by a small amount can result in the need for a smaller computer to perform the algorithm (or a small special purpose chip.)

    It is a technical improvement because it takes less time, space, and energy to perform. How do we get rid of these judges? They are incompetent. Judicial activists. And Google selected them for their willingness to agree to burn the patent system down for their appointment.

  37. Curious May 4, 2017 12:30 pm

    Saying Alice is treason is not really out there.
    Your statement is over the top. Alice wouldn’t have been a bad decision if the Federal Circuit didn’t ignore the limitations that SCOTUS placed on their decision. It could have been cabined to long-standing, fundamental economic processes. However, it was not.

    Regardless, calling for Supreme Court justices to be impeached on the basis of a decision you happen to disagree with does not exemplify rationale thinking. Don’t sink to the level of the opposition by using phrases “corrupt,” “impeach,” and “treasonous” will-nilly. Comments like those will only be used by the other side to show the unreasonableness of our side.

    We all appreciate your passion regarding the issues, but you let your passions get the better of you sometimes. By comparison, your post @35 is much better because it makes substantive points based upon your own experience and explains why the court has erred.

  38. Night Writer May 4, 2017 1:32 pm

    @37 Thinking about algorithms a bit more, I realize that the CAFC really did was add a new requirement to 112 like the written description requirement that one skilled in the art would recognize the invention. They aren’t saying the algorithm is not enabled, but rather that it is not expressly disclosed. So, they added a new requirement to 112 (and probably rendered about 200,000 patents unenforceable.)

    As to the treasonous behavior of the Justices, I stand by what I said. I think Alice is sufficient to impeach all the Justices and I think it is treasonous. It goes against our Constitution and the rule of law. It is the Justices writing opinions that enable lower judges to decide cases without evidence and without applying any law but Alice. Treason.

  39. Anon May 4, 2017 2:47 pm

    Sorry Curious, but your attempt to support the Supreme Court does not fly with me.

    This is just NOT an issue of the lower courts misapplying what the Supreme Court has done.

    Trying to put the blame anywhere but where it belongs is part of the problem.

    Do not be part of the problem.

  40. B May 4, 2017 2:52 pm

    Reyna, in is infinite wisdom, reduced the present claims to encoding and decoding data under Part 1. Kind of destroys the “claim as a whole” analysis that he required under Part 1 in Enfish. The claim as I see it is a valuable tool in image compression that takes into account aspects of standard facial features. There’s an analog here with speech compression I’ve seen. Guess all compression patents are worthless.

  41. Ron Katznelson May 4, 2017 2:55 pm

    Individual Inventor @29. Assertion that SCOTUS “unambiguously repeatedly instructs in Alice, Mayo, and Bilski” and citing text using “abstract idea” in the singular is unavailing, as it misses the key point of lack of definition to cabin “abstract ideas.” As I explained, nothing precludes multiple “abstract” features in the “abstract idea.” Consider the following more specific five possible choices, each finding that the claim in this case is directed to one abstract idea of:
    (1) creating a composite image
    (2) creating a composite image of facial feature images
    (3) creating a composite image of coded facial feature images
    (4) coding of images
    (5) coding of facial feature images

    Do Alice/Mayo/Bilski preclude any one of these single “abstract ideas” from being used in Step 1? I see no such preclusion. Is there any guarantee that the results after Step 2 would be identical under all five options? I see no such guarantee; for example, one can easily show inconsistent results under Options (1) and (3). In fact, the only way to guarantee that there is a unique result is to provide an unambiguous definition of “abstract ideas” that would withstand the logical test described below.

    I suspect that the “interested reader” can formulate a syntactic set theory proof that there exists a nonempty (large) set of well-formed claims for which there are multiple distinct, yet reasonable and permissible, choices that courts can make for the “abstract idea” so that Step 2 results in contradictory conclusions as to eligibility. This would be an excellent exercise for patent law students who have the basic prerequisites including linguistics and logic.

  42. step back May 5, 2017 4:03 am

    Ron @41

    Linguistics and logic form an insufficient set.
    What about physical reality?

    What about the fact that many of these claims contemplate physically real signals being transformed over time and with consumption of real energy by physically real machines. The electrons doth move and the transistors do switch states in more time than an ephemeral instant. “That”, is not an abstraction. That is physics.

    The funny thing about linguistics and logic is that we can oh so easily construct false models of the universe.

    Example: In a Silicon Valley coffee shop there sits at this very moment a second year engineering student sipping a Pink Frappcino while eagerly waiting to receive and implement any :idea” that is thrown her way. Ergo and ipso facto, Justice Kennedy or any Joe Schmoe can enter that java joint, toss the idea at the student and she, the student (irrespective of training or resources) will have the “idea” transformed into physical reality over the weekend if not faster.

    The conclusion is a no brainer.
    Meaning that persons who think that way have no brains.

  43. Night Writer May 5, 2017 8:57 am

    @42 great post step back.

  44. Gene Quinn May 5, 2017 9:44 am

    step @42…

    This all boils down to the fact that the courts… neither the Supreme Court nor the Federal Circuit… have defined the term “abstract idea.” That then allows for truly moronic decisions that reach the conclusion that something that is real, tangible and would hurt if you tripped over it is abstract — like that abstract MRI machine the PTAB said was patent ineligible.

    I think one of my next articles will be titled: “For goodness sakes please define abstract idea, please!”

  45. Curious May 5, 2017 9:51 am

    Trying to put the blame anywhere but where it belongs is part of the problem.
    Your comment errs by assuming that there is a single point of blame. There is PLENTY of blame to go around. SCOTUS should be blamed for issuing such loose (and arguable inconsistent) decisions. The Federal Circuit should definitely be blamed by ignoring the moderating language in Alice and by blazing a path through forest that figuratively burns down the whole forest. The USPTO should be blamed by advocating for such extreme positions. Congress should be blamed for letting this power grab by the judiciary go unchecked for so long. The administration should be blamed for putting anti-patent people in charge of the Patent Office.

    I never liked the Alice decision — however, I believe that decision could be read differently than how the Federal Circuit is reading that decision. If you call that “defending” Alice then I’m guilty as charged. However, at least I’m trying to make lemonade out of lemons instead of advocating that the lemon-dealer be arrested and thrown in jail for selling lemons that don’t taste right.

    This is just NOT an issue of the lower courts misapplying what the Supreme Court has done.
    It isn’t the only issue, but it is an issue.

  46. Curious May 5, 2017 10:06 am

    Consider the following more specific five possible choices, each finding that the claim in this case is directed to one abstract idea of:

    From Alice:
    At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U. S., at ___ (slip op., at 2). At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.

    Another quote from Alice:
    A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].” Id., at ___ (slip op., at 8–9). Mayo made clear that transformation into a patent-eligible application requires “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’” Id., at ___ (slip op., at 3).
    Clearly, the claim at issue in this case does more than take any one of your alleged five abstracts ideas and essentially recite “apply it.” The claimed invention, as a whole, must be considered. When you’ve split up the claimed invention into allegedly five different “abstract ideas,” you are NOT considering what the claims, as a whole, are directed to.

    Based upon my first quote from analysis, merely identifying some alleged idea touched by the claims isn’t enough since nearly all claims arguably touch upon something that could be deemed patent ineligible (i.e., laws of nature, natural phenomena, or abstract ideas). The Supreme Court laid out a two-step process — not a one-step process that the assumes the “directed to” condition is always met.

  47. jbavis May 5, 2017 10:11 am

    Ron Katznelson @ 41:

    1) your fear they will cherry pick which abstract idea is without merit. They didn’t pick any of your 1-5 items as the abstract idea – instead they picked the overarching encoding and decoding as the abstract idea. All of your 1-5 items fall under the category of encoding and decoding.

    2) RecogniCorp should have argued more strongly that their method is indeed directed to their specific improvement and not merely “encoding and decoding”. If they did argue this (I didn’t look), then we have a problem.

  48. step back May 5, 2017 11:14 am

    jbavis @ 47:

    Why not come out and say it?

    ALL inventions involving communication are patent ineligible because all communications involve “encoding and decoding“.

    The following inventions are all patent ineligible:
    The telegraph,
    The telephone,
    The AM radio,
    The FM radio,
    The television,
    All computers which encode human perceptible information into binary codes and then decode the same during output.

    Judge Reyna clearly implied that Morse’s invention (telegraph) was ineligible because it involved “encoding and decoding” (EAD).

    Let’s step back and think on that just a little more.
    When a customer enters the telegraph office and tells the clerk what his message is and whom it is to be delivered to, that involves many rounds of EAD. The customer has to encode his thoughts into sounds made in the English language. The telegraph clerk has to decode the sounds he heard into semantic comprehension and then recode those understandings into a string of written symbols representing words in the English language (a.k.a. writing it down). He then further encodes those written codes into a series of electrical dots and dashes. At the receiving end, the EAD process proceeds in reverse,

    Yes, all communication involves EAD.
    Why at this very moment I am “encoding” my thoughts into keyboard strikes and my computer is further encoding them into Internet Protocol packets. At your end your computer decodes the received signals and your brain decodes the little dots (lit up pixels) on your screen into semantic meanings.

    Meaning, what you and I are doing here is patently illegal!
    (My apologies for having involved you in this criminal enterprise 😉 )

  49. jbavis May 5, 2017 1:18 pm

    EG @ 19

    What I would find more ironic is if 3rd parties file IPR’s against the patents Google/Waymo is using in their important fight against Uber. Invalidating THOSE patents might go a long way in convincing the main anti-patent funder of doing a 180.

  50. Curious May 5, 2017 2:48 pm

    SB @48 — nice points. What Reyna is guilty of (he isn’t the sole person at the Federal Circuit guilt of this) is that abstracting of the invention into something barely recognizable (and certainly not reflective of the invention, as claimed) and then declaring that abstraction as being abstract.

    That approach can be used to declare nearly any invention as being directed to patent ineligible material — and is evidence of the inappropriateness of the approach.

  51. step back May 5, 2017 3:33 pm

    Curious @ 50:

    Can you please simplify your message by making it more generalized and abstract?
    It hurts my mind to think too deeply.

    Maybe we should say that all “stuff” that is too hard for a Medieval mind to comprehend is abstract, obtuse and thus patent ineligible?

    Let’s keep it simple such as as limiting ourselves to plucking leaves from “natural” trees or lathing baseball bats out of their trunks or doing our accounting on the same abacus used by King Tut’s abacus man. This business with computers, gene splicing and whatnot strains my brain way too much!

    /end sarcasm

  52. Curious May 5, 2017 3:41 pm

    Can you please simplify your message by making it more generalized and abstract?
    Google say patents bad — must declare all patents ineligible.

    Simple enough?

  53. Gene Quinn May 5, 2017 3:51 pm

    I agree with jbdavis @49. I can’t believe Uber hasn’t filed IPRs on Google’s patents. I can’t believe that those in the industry with money (and giant portfolios) at stake haven’t filed IPRs against Google’s self driving patents.

    Isn’t it time to put up or shut up?

  54. step back May 5, 2017 4:35 pm

    Curious @52: Much better. Tarzan now understand. Not sure if tribunal will understand.

  55. B May 5, 2017 4:47 pm

    From the wisdom of Judge Reyna (slip op at p. 8): “Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claims non-abstract.”

    SOMEBODY PLEASE CORRECT ME: In McRo the CAFC held that adding mathematical algorithms (abstract) to standard animation practices (abstract) resulted in a patent-eligible claim. Similarly, in Diehr, adding math (“the algorithm”) to another abstract idea (curing rubber)(well-known, routine and conventional for sure) resulted in a patent-eligible claim.

  56. Gene Quinn May 5, 2017 6:29 pm


    You seem to be following. This decision is difficult to reconcile with other panel decisions.


  57. jbavis May 5, 2017 7:00 pm


    I’m working under the old “if Uber is the enemy of Google then Uber is the friend of everyone here”.

    The greatest sword of folks here are IPR’s – imagine coming together and funding IPR’s until the Google patents are invalidated and Google either starts to see the light or does a 180.

    A long shot? Maybe, but Google has invested in countless moonshot projects over the years and have finally settled on the one moonshot that they think will bring substantial revenues – driverless car technology. This is a critical time, their original PageRank patents are close to expiring – controlling driverless car technology could very well play a major role in future revenues.

    Yet these Google/Waymo patents play a large role in controlling this future revenue stream. I find it most ironic if IPR’s played any kind of role with these patents.

    Not only would a half dozen IPR filings be far cheaper than the cost of lobbying Washington – but perhaps even more importantly – far FASTER.

  58. B May 5, 2017 7:13 pm

    “This decision is difficult to reconcile with other panel decision.”

    Difficult no. Impossible yes. This is what comes about when there are no standards of evidence and the CAFC considers legal standards optional. Claims as a whole my —.

  59. step back May 5, 2017 7:32 pm

    my a hole ?

  60. step back May 5, 2017 7:34 pm

    Like beauty, abstractness is in the eye of the beholder.
    Why to a wort hog, even an MRI machine is abstract.