Generic Software Claims Found Ineligible under § 101

A common theme found in recent patent litigation is that software claims lacking detail are more likely to be found invalid under 35 U.S.C. § 101.

The U.S. District Court for the Western District of Washington at Seattle issued an opinion on December 15, 2015 in a case captioned Recognicorp, LLC v. Nintendo Co. Ltd., et al. (case no. C12-1873RAJ) regarding patent eligibility under 35 U.S.C. § 101 of software claims.  Ultimately, the District Court found that the patent claims are ineligible under § 101.

Through a number of assignments, Recognicorp is the current assignee of U.S. Patent No. 8,005,303 (the '303 Patent), entitled "Method And Apparatus For Encoding/Decoding Image Data".  Recognicorp alleged that Nintendo infringed the '303 Patent by selling composite image customization products, including "software included on the Nintendo Wii to create and customize a facial (or other) feature of a Mii."

In the Nintendo gaming architecture, a Mii is a free-form digital avatar used in Nintendo's Wii gaming consoles, and allows users to develop a likeness of themselves, other people, or invented characters.  After creating a Mii using the Mii Channel on a Wii or the Mii Maker application on a Nintendo 3DS or Wii U, Mii's can be used as playable characters in various titles for each of the named consoles.

The '303 Patent discloses a "method and an apparatus for encoding images" and explains that "[i]t is known in the art to create images on the basis of components that are assembled to form a complete image," such as by using "[p]aper strips containing exemplary features" or by using "a program element running on a computing platform which allows a user to select individual components and combining them on a pre-selected face."  In so "constructing an image, pictorial entities are selected from a library of entities as assembled into images," storage of which may require "significant amounts of memory."  As a result, the '303 Patent explains that "there exists a need in the industry to refine the process of encoding images such as to reduce the memory requirements for storage and the bandwidth required for the transmission of the image."

Figure 1 of the patent is reproduced below that illustrates a process flow diagram of the method of claim 1.

Claim 1 is provided below:

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.

The District Court noted the Supreme Court's two-part test to analyze claims for patent-eligibility.  First, courts must determine whether the claims at issue are directed to one of those patent-ineligible concepts, and if so, then secondly courts must examine what else is there in the claims before them by considering "the elements of each claim both individually and as an ordered combination to determine whether the additional elements 'transform the nature of the claim into a patent-eligible application'".

The second part has been characterized as searching for an "inventive concept" -- i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

Is the '303 Patent Directed to A Patent Ineligible Concept?

The District Court noted that in essence, the steps claimed in the '303 Patent boil down to: (1) displaying potential input variables (the facial features and their modifications), (2) selecting and manipulating the inputs, (3) deriving an output code by performing a "multiplication operation" on the inputs, and (4) outputting the original inputs on another device by performing the sequence in reverse on another device.

The District Court further summarized the '303 Patent by stating that, in other words, the '303 Patent utilizes a "paint by numbers" approach to creating, encoding, and decoding composite facial images.  This reasoning was used to conclude that the steps of the patent are directed to the abstract idea of encoding and decoding composite facial images using a mathematical formula.

The District Court cited to other decisions and noted that such other courts have found that encoding and decoding data is a "fundamental concept" -- or put another way, an abstract idea.

The District Court separately noted that processes that can be performed entirely in the human mind or with pen and paper are not patentable, and even without construing the claims to determine the precise parameters of the encoding scheme, the District Court noted that the specific image encoding process likely can be performed entirely within the human mind or with pen and paper.  So long as the individual is provided the specific input variables -- here, the facial feature element codes and code factors -- she can apply the "multiplication operation" on the facial code until she can derive a composite image code.  When another individual is provided this same composite facial image code, he could perform the multiplication operation backward to derive the same composite image.

This allegation by the District Court, that the claim can be performed entirely in the human mind, is troublesome since it ignores the first clause "displaying facial feature images on a first area of a first display via a first device associated with the first display," which cannot be performed in the human mind and necessarily requires computer technology.  Nonetheless, seeing as this first step is likely considered insignificant extra-solution activity, the outcome of patent ineligibility is unlikely to be changed despite this possible flawed "separate" reasoning.

The District Court rounded out the analysis by rejecting the argument that the claims are necessarily rooted in computer technology, an attempt to save them from invalidity under section 101, by stating that the claims merely require reproducing the image on a different device or generically "transmitting" the image code.  Transmission may be completed "either verbally or through electronic communication means" (also providing that the "data transmission medium" can be through "any other communication medium suitable for the transfer of data").

In other words, the '303 Patent does not solve a problem created by or specifically arising in a particular technological environment as it can be applied to many technological environments.

Does the '303 Patent Describe an Inventive Concept?

Here, the District Court noted that there is little doubt that the claimed steps for generating a composite facial image -- namely selecting, manipulating, and incorporating facial features into a composite image -- are purely conventional.  The '303 Patent's specification itself discloses that these very methods for creating composite facial images were well established in the prior art.

The other claimed steps were considered obvious in the field.  Generating a composite facial image necessarily requires a degree of customization based on manipulating the essential elements of a face.  But, again, the '303 Patent itself acknowledges common techniques for creating composite facial images involved dividing the image of a face into constituent features and then selecting and combining features to create the image from a given library of features.

The District Court did away with the final step of reproducing a previously generated facial image as being obvious as well by assuming that there was no other use for it -- "why create a customized face if not to recreate it?"  Here, lack of description of alternative use cases in the specification probably did not help.

The Defendant argued that the encoding scheme and algorithm provide the "inventive concept" needed to render the claims patent-eligible.  But, the '303 Patent itself acknowledged that constructing composite images based on selected individual features was well known in the art.

Since the '303 Patent's claimed methods and systems do not improve the function of a computer nor do they improve upon methods of creating composite images, the innovation claimed by the '303 Patent is merely a more efficient manner of encoding composite facial image data by using a generic computer.

The District Court concluded that the '303 Patent failed both prongs of the Alice test.

The "Machine or Transformation" Test

As an alternative, the District Court additionally analyzed the claims under the "Machine or Transformation" test, in which a method claim may be patentable if (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing.  The discussion was short, however, with the District Court simply noting that the mere manipulation or reorganization of data does not satisfy the transformation prong and the machine prong was not considered.

Looking over the '303 Patent, it appears that the patent is well-written with sufficient detail, however, the claims failed to incorporate necessary detail to survive § 101.  Because the claims are broad, the description of prior art or known concepts in the patent itself worked against any arguments alleging that the claims describe an inventive concept.

Novel aspects of claim 1 are within wherein clauses of the "selecting" limitation, and using wherein clauses to recite such aspects can be a problem itself since such clauses can be considered to recite optional material (MPEP § 2111.04).  Further, those novel aspects are recited generically, such as "incorporates the selected facial feature image into a composite image on a second area of the first display," "associated with a composite facial image code having at least a facial feature element code," and "derived by performing at least one multiplication operation on a facial code".  Details for how any of these functions are performed likely would improve the prospects of the claim surviving § 101.

If a broad independent claim is desired, perhaps usage of dependent claims as fallback positions to recite the details can be helpful if the patent is ever intended to be asserted in court.