July 31, 2013, was a big day for 35 U.S.C. § 101; the statute was used in two different cases as a basis for finding that patent claims failed to recite patent-eligible subject matter, and were thus invalid. The patent claims in Digitech Image Techs., LLC v. Fujifilm Corp., No. 8:12-cv-1679-ODW(MRW) (C.D. Cal. July 31, 2013), were directed to image device profiles describing "the color and spatial properties of a device." The claims in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nos. 12-2501, 12-6960 (MAS)(TJB) (D. N.J. July 31, 2013), were directed to digitizing hard copy documents, sending the digitized image to an application, and then receiving user input concerning portions of the hard copy document used in the application or for storage.
The Digitech court granted the defendants' motion for summary judgment of invalidity concerning the claims of U.S. Patent No. 6,128,415. The court began with a discussion of Section 101 jurisprudence, including Bilski v. Kappos, 130 S. Ct. 3218 (2010), and CLS Bank Int'l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. May 10, 2013). Then, after a brief review of the law of claim construction, the court found "no reason to construe the term 'device profile' to mean anything other than its plain and ordinary meaning."
The court then turned to analyzing Digitech's claims for patent-eligibility. Claims directed to a "device profile" were not patent-eligible because the profile was simply data, and not anything tangible. Thus, the claims failed the machine-or-transformation test. Further, a device profile was neither "a composition of matter," nor a "process."
In addition, method claims directed to generation of the "device profile" were not patent-eligible because they failed the machine-or-transformation" test (even if, the court acknowledged, that test was not the sole test for patentability). Moreover, the "device-profile method claims" were directed to an abstract idea. The claim had no structural limitations, and simply appending computer functionality did not impose meaningful limitations on the claim. The court rejected Digitech's assertion "that the claimed invention is a digital-image processing system, either in part or in whole."
The Content Extraction court granted the defendants' Rule 12(b)(6) motion to dismiss based on the invalidity of U.S Patent Nos. 5,258,855, 5,369,508, 5,625,465, and 5,768,416.
After the usual initial discussion of Section 101 patent-eligibility case law, the court considered, and rejected, the plaintiff's argument that claim construction was needed before evaluating the patent claims under Section 101. Here, the court was able to conclude that "the Patents-in-Suit encapsulate invalid abstract ideas, even when construed in the manner most favorable to Plaintiff." Further, although each patent claim is presumed valid, claims that were "substantially similar and linked to the same abstract idea" could be disposed of in similar fashion.
The patent claims here failed the machine-or-transformation test because they did not require any special programming or algorithm to performed claim functions. The requirement of a digitizing unit or scanner in the claims did not add any meaningful limitation to the patents' scope. The plaintiff argued that the claims passed the "transformation" prong of the test, by transforming an ink image to pixels, and by transforming "bit-mapped pixels into machine-readable variable (or field) values stored in targeted memory locations." The court rejected this argument, because merely manipulating data did not achieve the requisite transformation.
In sum, the court in this case was "presented with an abstract idea regarding the extraction of information from hardcopy documents and the processing of information contained in those documents." The disembodied steps of storing and sorting data were not patent-eligible. Because "[t]he Patents-in-Suit represent abstract concepts," the "are not eligible for patent protection."