Generic Structure Not Enough to Establish Patent-Eligibility

The Northern District of California recently granted a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent No. 8,350,928, directed to “a system and method for the automatic analysis and categorization of images in an electronic imaging device.” Secure Cam, LLC v. Tend Insights, Inc.No. CV 18-02750-EJD (N.D. Cal. Nov. 14, 2018). The claims of the ‘928 patent were ineligible because, like In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016), the claims were directed to the abstract idea of analyzing and automatically categorizing digital images. Further, like TLI, the claims include physical components, such as a digital camera, “but the physical components ‘merely provide a generic environment in which to carry out the abstract idea.’”

The ‘928 patent is the parent application for three continuation applications (U.S. Patent Nos. 8,531,555, 8,836,819, and 9,363,408) that all share a common specification. The court held claim 1 of the ‘928 patent was a representative claim for each patent because there were only minor differences between the claims. Claim 1 of the ‘928 patent is reproduced here:

1. A digital camera for automatically categorizing captured image data, the digital camera comprising:

a processor within the digital camera for capturing image data;

an analysis module within the digital camera coupled to the processor and configured to perform image data analysis on the captured image data at the time of image capture by the digital camera and to automatically generate, responsive to the performed image data analysis, a category tag for the captured image data; and

a memory for storing the generated category tag in association with the captured image data for categorizing the captured image data.

The court applied the two-step Alice framework to Tend Insights’ Rule 12(b)(6) motion to dismiss.  Citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), the court noted that “claims directed at collecting information, analyzing it, and displaying results of the collection are focused on an abstract idea.” Specifically, as found by the court in TLI, “claims direction to ‘classifying and storing digital images in an organized manner’ [are] abstract.” Secure Cam argued that the claims describe an improved digital camera “with analysis modules capable of implementing software routines for analyzing and automatically categorizing images.” The court disagreed because the claims were not directed to a specific technological improvement, unlike the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Instead, the digital camera, processor, and memory were described in conventional and generic terms, and the analysis module was described by in purely functional language. Therefore, the court found that claim 1 of the ‘928 patent was directed to an abstract idea.

Moreover, under Alice step two, the claims do not require “any specific kind of computer architecture, component or data structure.” Instead, the ‘928 patent describes that the invention could be used on a range of hardware. The court found that the analysis module fails to provide an inventive concept, and instead “is simply a substitute for the human effort it would take to analyze and categorize images. Further, the court found that the inclusion of a digital camera does not save the claims because “[l]ike the telephone unit in TLI, the digital camera ‘simply provides the environment in which the abstract idea’…is carried out.”

Therefore, the court found claim 1 failed the Alice framework and was drawn toward ineligible subject matter.

Lessons for Practice

Including structure in the claims and specification of software applications can be helpful in establishing patent eligible subject matter. However, this case illustrates that the mere inclusion of physical components in the claims is not enough to make a software claim patent-eligible subject matter. Instead, technical improvements to physical components should be incorporated into the software claims to satisfy the requirements of § 101.

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