Image Processing Patent Held To Be An Abstract Idea Under Alice Corp.

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Digitech Image Technologies ("Digitech") asserted U.S. Patent No. 6,128,415, directed to the generation and use of device profiles for digital image processing system against numerous defendants, including Xerox and Fujifilm Corporation. Digitech appealed the district court's finding on summary judgment that the asserted claims were invalid under 35 U.S.C. §101. Specifically, Digitech argued that the district court erred in finding (1) that the device profile claims are directed to a collection of data that lacks tangible or physical properties and (2) that the asserted method claims encompass an abstract idea not tied to a specific machine or apparatus. The Federal Circuit affirmed the decision of the district court.

The '415 patent was aimed at reducing distortion of an image's color and spatial properties caused by imaging devices (e.g. digital cameras, TVs, printers) due to the fact that such devices differ in the range of colors and spatial information that they utilize. According to the court, independent claims 1 and 26 described a device profile as "a collection of information; specifically, a description of a device dependent transformation of spatial and color information":

1. 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.

26. 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 data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.

Digitech argued that the claimed "device profile" was patent eligible subject matter under section 101 because it was a tangible object that was an "integral part of the design and calibration of a processor device within a digital image processing system." In particular, Digitech argued that the device profile is "hardware or software within a digital image processing system" and exists as a tag file appended to a digital image. The court disagreed, finding that Digitech's position was unsupported by the claim language, which did not describe the device profile as a tag or any other embodiment of hardware or software ("[T]he claims encompass all embodiments of the information contained in the device profile, regardless of the physical process through which this information is obtained or the physical medium in which it is stored."). Thus, the claimed device profile was viewed as a collection of information or data in an "ethereal, non-physical form" that was ineligible subject matter under section 101.

Similarly, the patent's method claim for generating a device profile was found to be ineligible subject matter because it was directed at an abstract process of organizing information through mathematical correlations (i.e. combining two data sets into a single data set, the device profile) that was not tied to a specific structure or machine and "did not require input from a physical device." The court noted the established principle that claims falling within one of the four subject matter categories (e.g. process) may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas and the Supreme Court's recent affirmation that fundamental concepts by themselves, are ineligible abstract ideas. Citing Diamond v. Chakrabarty, 447 U.S. at 309 and Alice Corp. v. CLS Bank Int'l, 573 U.S. ___, No. 13-298, slip op. While Alice recognized that a claim may be eligible if it includes additional inventive features beyond just the abstract idea, recitation of an abstract idea does not become patent eligible "merely by adding the words 'apply it'." Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1276 (Fed. Cir. 2012).

The court's reasoning suggests that the patent could have been in compliance with section 101 had its claims been expressly tied to an image processor and its use of the "device profile" to capture, transform or render the digital image. Instead, the claims only recited the manipulation of existing data (i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions) into a new form (device profile). The claims' reference to a "digital image reproduction system" in the preamble was found to be insufficient for imparting such limitations. Citing Bicon, Inc. v. Strau-mann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (holding that the preamble does not limit claim scope if it "merely states the purpose or intended use of an invention.") The claims were simply too broad and lacked the requisite tangible/ physical limitations to go beyond abstract mathematical algorithms.

Topics:  Abstract Ideas, CLS Bank v Alice Corp, Patent Infringement, Patent Litigation, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates, Science, Computers & Technology Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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