In June of this year, the U.S. Supreme Court issued its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. The ruling, in short, found that merely requiring generic computer implementation of a business process does not transform that abstract idea into a patent-eligible invention.
Less than a month later, the U.S. Court of Appeals for the Federal Circuit put Alice to work in Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.
Snapshot of the case
Digitech Image Technologies holds a patent related to the generation and use of an “improved device profile” involved in digital image processing. The device reduces the distortion of an image’s color and spatial properties. The patent covers both a “device profile” and methods for generating a device profile.
Digitech sued 32 defendants for patent infringement. Several defendants sought to have the case dismissed before trial, arguing that the device profile and method claims at issue were invalid because they were patent-ineligible. The district court agreed, and Digitech appealed.
Focus on method claims
Under Section 101 of the Patent Act, patent protection is available for a new and useful process, machine, manufacture or composition of matter, as well as a new and useful improvement thereof. Digitech argued that the method claims were patent-eligible because they described a process for generating a device profile that’s specifically tied to a digital image processing system and is integral to the transformation of a digital image.
The Federal Circuit acknowledged that the method claims did describe a process. But, it explained, claims that fit within one of the four patent-eligible categories can nonetheless be ineligible if they encompass laws of nature, physical phenomena or abstract ideas.
According to the court, Digitech’s patent claimed an abstract idea because it described a process of gathering and combining patent-ineligible data in a manner that doesn’t require input from a physical device. Without more, “a process that employs mathematical algorithms to manipulate existing information to generate additional information” is not patent-eligible.
Citing Alice, the Federal Circuit conceded that such a claim may indeed be eligible if it includes additional inventive features so the claim covers something more than just the abstract idea. But it rejected Digitech’s claim that the patent language expressly tied the method to an image processor. The court found that the method claim “generically” described a process of combining two data sets into a device profile — the claim didn’t cover the image processor’s use of that profile in the capturing, transforming or rendering of a digital image.
Another thumbs down
Digitech also contended that the device profile was eligible for a patent because it is a tangible object that is an “integral part of the design and calibration of a processor device within a digital image processing system.”
As the Federal Circuit noted, to be eligible, all of the patent-eligible categories of inventions except process claims must exist in some physical or tangible form. The court found that the device profile is not a tangible or physical thing. Rather, it said, it is a collection of intangible color and spatial information.
The device profile, the court further clarified, comprises two sets of data — and the patent is not directed to any tangible embodiment of this information (such as in physical memory or other medium). “Data in its ethereal, non-physical form is simply information” that does not fall into any of the patent-eligible categories.
Digitech asserted that the device profile exists as a tag file appended to a digital image. The patent language, however, suggested otherwise. The patent did not describe the device profile as a tag or any other embodiment of hardware or software.
This first patent-eligibility decision by the Federal Circuit since the Supreme Court’s Alice ruling brings a bit more resolution to the business-method patent brouhaha. And, unfortunately for some holders of method patents, it is not good news.