Functional Claiming Can Spell Patent-Eligibility Doom

Granting a Rule 12 motion to dismiss, a court held patent-ineligible, under the Alice abstract idea test and 35 U.S.C. § 101, a patent claim that recited “determining automatically an optimal exposure level.”  SungKyunKwan University v. LMI Technologies USA Inc., Case No. 16-cv-06966-VC (N.D. Cal. May 3, 2017).  Claim 1 of U.S. Patent No. 7,957,639 “recite[d] a solution to a problem but not the means of achieving it,” and such claims are “not drawn to patent-eligible subject matter,” explained the court.  Claim 1 of the ’639 patent recites in full:

A method for determining an optimal exposure of a structured light based three dimensional (3D) camera system including a projecting means for illuminating a predetermined pattern on a target object, an image capturing means for capturing an image of the target object with the pattern projected, and a processing means for reconstructing 3D data based on the captured image, wherein the method comprises the steps of:

obtaining an image of a target object with a predetermined pattern projected thereon, which is illuminated from a projecting means, and an image of the target object without a predetermined pattern projected thereon; and

determining automatically an optimal exposure level of the structured light based 3D camera system using said two kinds of images.

In a way, this opinion supports to the problem-solution approach to supporting patent eligibility.  The court here seemed amenable to endorsing the patent eligibility of a patent claim that recited a technical solution to a technical problem.  Unfortunately, the court thought that, though the preamble laid out a technological environment, and the last element the end goal, “[t]he method of optimizing exposure on a structured-light 3D camera – the how that’s nominally the subject of the claimed invention – is absent.” (Emphasis in original.)

Because the recited patterned and non-patterned images were respectively inherent in prior art cameras and merely “ordinary images,” the claim place[d] the full weight of patentability on the claim’s use of the word ‘using.’”  The patent owner argued that claim construction was needed to understand this term, but the court answered that “whatever method might be encompassed by the idea of ‘using’ patterned and unpatterned images, claim 1 doesn’t disclose it.”

While perhaps not every district court would have granted a motion to dismiss alleging infringement of claim 1, the result here is unsurprising.  More interesting here was the court’s dicta, in which it suggested that dependent claims probably are patent-eligible, and that the plaintiff might want to replead its complaint alleging infringement of those dependent claims, if it could.  The plaintiff argued that the specification described patent-eligible subject matter; the court responded that

[t]o the extent the University wishes to rely on the language of the specification, it isn’t inviting construction of claim 1 so much as dismissal with leave to replead under a patent claim that actually recites the specification.  Indeed, any other claim of the ‘639 patent would be well-suited to the task, as all other claims depend from claim 1 and recite, at some level, the method the specification teaches.

Lessons for Practice

Functional language often cannot be avoided in software patent claims.  But there is functional claiming and then there is simply claiming functionality.  This claim was written well before the 2010 Bilski decision –who knew then that claiming purely functionality was likely to be a problem, as long as the claimed functionality was novel and non-obvious?  Well, today we have a reminder that, as much as possible draft your claims to recite not just the “what” of the invention, but the “how.”