Patent-Eligibility Saved by Reciting Implementation Details

Here is a case illustrating that broad claims can fall under the Alice abstract idea test, while narrower claims with a little more implementation detail can be found patent-eligible under 35 U.S.C. § 101.  In Procter & Gamble Co. v. QuantifiCare Inc., No. 17-CV-03061-LHK (N.D. Cal. Dec. 19, 2017), the court found that some claims of U.S. Patent No. 6,571,003 (“Skin imaging and analysis systems and methods”) were directed to an unpatentable abstract idea, while others survived the Alice analysis.  The court thus granted-in-part and denied-in-part the defendant’s motion to dismiss.

Claim 1 of the ’003 patent is representative of the claims that the court found not patent-eligible:

A method for locating one or more visual skin defects of a portion of a person, comprising:

acquiring a first digital image of the portion of the person;

electronically analyzing the first digital image of the portion of the person to locate an area containing a skin defect;

determining a first numerical severity associated with the area containing the skin defect; and

generating a comparison between the first numerical severity and a predetermined value associated with a population of people.

On the other hand, claim 30 of the ’003 patent is representative of claims that were found patent-eligible:

A method for locating a plurality of visual skin defects associated with a face of a person, comprising:

acquiring a first digital image of the face of the person, the first digital image having a size and a skin color;

identifying a first plurality of landmarks located on the first digital image of the face of the person, wherein at least one of the landmarks is selected from the group comprising (a) a corner of an eye in the first digital image, (b) a corner of a nose in the first digital image, and (c) a corner of a mouth in the first digital image;

electronically determining a sub-image of the first digital image of the face of the person based on the first plurality of landmarks; and

electronically analyzing the sub-image of the first digital image of the face of the person to locate a plurality of defect areas, wherein each defect area contains a visual skin defect and each defect area has a size that is less than about 10% of the size of the first digital image of the face of the person.

Claim 1, the court found, was “‘directed to’ acquiring and analyzing a digital image of a person to locate and quantify skin defects.” Thus, claim 1 was analogous to claims that have been held to be patent-ineligible because they were directed to mere analysis of information.  See Electric Power Group, LLC v. Alstom S.A., and FairWarning IP, LLC v. Iatric Systems, Inc.  Moreover, under the second prong of the Alice test, there was no significant inventive concept to overcome the unpatentable abstract idea because the claim language did not recite an improvement to computing technology but was rather functional in nature.

Claim 30, on the other hand, read as a whole was “‘directed to’ “electronically determining a sub-image of a digital image by reference to facial features and electronically locating skin defects within that sub-image.” At least at the pleadings stage, the court stated agreement with the plaintiffs’ position that this was not an unpatentable abstract idea. Instead, the claim arguably recited a technical improvement because it described steps setting forth how facial features were analyzed and skin defects electronically located. Even though the claim implemented admittedly conventional steps, it provided new rules for a computer to carry out these steps, and thus claim 30 was saved (at least for now) by McRO, Inc. v. Bandai Namco Games America Inc.

Lessons for Practice

Look at the recitations found in claim 30, but missing from claim 1.  This case is a good illustration of how pure functional claiming, i.e., simply claiming what a system does, can be problematic from the standpoint of patent-eligibility. On the other hand, this case is also a good illustration of how claiming implementation details, i.e., how a system does what it does, can save patent-eligibility.

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