Patent claims directed to “technology for modifying video signals” are patent-eligible under 35 U.S.C. § 101, according to a Central District of California court. Oplus Techs. v. Sears Holding Corp., No. 12-cv-5707-MRP (C.D. Cal. March 4, 2013). Accordingly, the court denied the defendant's motion for summary judgment of invalidity (which had been brought under 35 U.S.C. § 112, as well as under Section 101).
Independent claim 7 of U.S. Patent No. 6,239,842, reproduced in full at the end of this post, was directed to a “method for de-interlacing an interlaced video format.” Independent claim 56 of U.S. Patent No. 7,271,840, was directed to a “method of determining entropy of a pixel of a real time streaming digital video image signal, for automatically correcting an error produced during real time editing of the real time streaming digital video image input signal.”
The court began its Section 101 analysis with the ’842 patent, immediately turning to the Federal Circuit's decision in Research Corp. Technologies v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). The patents at issue in that case, held to recite patent-eligible subject matter, were directed to “digital image halftoning.” Explaining this holding, the present court explained “Mathematical algorithms are abstract ideas. Application-specific implementations of mathematical algorithms are not, assuming they are not mere post solution activity.” The court quoted RCT, which in turn quoted Diamond v. Diehr, 450 U.S. 175 (1981), for the proposition “that inventions incorporating and relying upon even 'a well-known mathematical equation do not lose eligibility because 'several steps of the process [use that] mathematical equation."'"
As an aside, it is interesting that the court also relied on RCT for its discussion of “(1) the impropriety of dissecting claims into old and new elements and then to ignore the old elements in the analysis, as well as (2) then necessity of considering the claims as a whole in determining their eligibility under section 101.” This reliance is interesting because, as discussed with respect to other Section 101 cases reported on this blog, including the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., recent decisions have dissected the claims element-by-element to look for patent-eligible subject matter.
In any case, the court here emphasized that Section 101 analysis is a “course eligibility filter.” Indeed, the court cited approvingly a law journal article arguing that Section 101 analysis should be deferred for use as a last resort. See Dennis Crouch & Robert P. Merges, Operating Efficiently Post-Bilski by Ordering Patent-Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010), discussed here.
With these precepts in mind, and comparing claim 7 of the ’842 patent to the claims at issue in RCT, the court found that the claims of the ’842 patent were patent-eligible. In both cases, the claims recited “methods of processing an image on a pixel-by-pixel basis.” Further, the claims at issue here were similar to the claims in Diamond v. Diehr, where there was no preemption of a mathematical equation, but simply a foreclosure of the use of that equation in a particular process. To argue, as the defendant did here, that the claims were not patent-eligible because they simply made a “decision” about video signals without any actual manipulation of the signals, would be to argue that no software could be patent-eligible. The court was not willing to go that far.
The court also analyzed claim 56 of the ’840 patent, “directed to a method for determining entropy of a pixel of a real time streaming digital video image signal.” The court focused on the recitation in claim 56:
calculating a value of the entropy of each said previous pixel in said previous field, of each said next pixel in said next field, and of each said virtual pixel in said current field from said values of said pixel entropy counters of said pixels,
whereby said values of the entropy of each said previous pixel in said previous field, of each said next pixel in said next field, and of each said virtual pixel in said current field, in the streaming digital video input image signal are used for automatically deciding, by performing sequences of mathematical logical operations, not to use values selected from the group consisting of value of a said previous pixel in said previous field, and value of a next pixel in said next field, for assigning a real value to said virtual pixel in said current field in said global input grid of pixels featured in the streaming digital video input image signal, thereby correcting an error produced during real time editing of the streaming digital video image input signal.
The court stated that its Section 101 analysis turned on whether the “whereby” clause was limiting. If it was non-limiting, then the claim was not patent-eligible, because “then the claim as a whole is directed to the determination of a statistical measure of data representing image pixel intensity.” (The court did not address the seeming contradiction in stating that the scope of “the claim as a whole” was determined by a single clause in the claim.)
After a discussion of both Federal Circuit precedent on whereby clauses, as well as the prosecution history for the ’840 patent, the court held that the whereby clause here was limiting. Instead of simply reciting an intended result or a field of use, in construing the claim, the court found that “[t]he patent specification and file history confirm that the claimed invention is a palpable application in the field of video signal processing, specifically — error correction.” The requirement to “apply the calculated pixel entropy values to 'correct an error produced during real time editing of the streaming digital video image input signal'” was recited in the whereby clause of claim 56. Therefore, the motion that the ’840 patent was not directed to patent-eligible subject matter was denied.
As noted above, although not discussed in this post, the court also denied the defendant's motions that the claims of the patents-in-suit were invalid under 35 U.S.C. § 112.
A method for de-interlacing an interlaced video format, the method comprising the steps of:
(a) receiving the interlaced video format feature a sequence of fields of pixels to be de-interlaced;
(b) evaluating logical operations of linear combinations of values selected from the group consisting of averages of known values of spatial pixels, averages of said known values of temporal pixels, standard deviations of said known values of said spatial pixels, standard deviations of said known values of said temporal pixels, minimums of said standard deviations of said known values of said spatial pixels, absolute values of differences between said averages of said known values of said temporal pixels and said known values of said spatial pixels, said known values of said spatial pixels, and a plurality of constants, said logical operations selected from the group consisting of greater than, greater than or equal to, less than, less than or equal to, `and`, `or`, and `xor`; and
(c) deciding upon assignment of values to missing spatial pixels according to results of said logical operations.