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:
- 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. Hotels.com, 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.”