Federal Circuit Clarifies Step One of Alice

The U.S. Court of Appeals for the Federal Circuit (CAFC) has issued a precedential opinion reversing a district court's decision to invalidate patent claims challenged by GoPro, Inc. (GoPro). The claims were deemed unpatentable under 35 U.S.C. § 101. The CAFC held that the district court incorrectly categorized the claimed embodiment as an abstract idea at the first step of the Alice test.

Contour I.P. Holding L.L.C. (Contour) has asserted U.S. Patent Nos. 8,890,954 and 8,896,694 for portable point-of-view (POV) cameras against GoPro, Inc. These POV cameras create video recordings in high-quality and low-quality formats, streaming the lower-quality file to a remote device for viewing and adjustments.

Representative claim 11 recites:

11. A portable, point-of-view digital video camera, comprising:

            a lens;

            an image sensor configured to capture light propagating through the lens and representing a scene, and produce real-time video image data of the scene;

            a wireless connection protocol device configured to send real-time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and

            a camera processor configured to:

                        receive the video image data directly or indirectly from the image sensor,

                        generate from the video image data a first image stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,

                        cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,

                        receive the control signals from the personal portable computing device, and

                        adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.

Based on Contour's arguments in a prior lawsuit involving the same patents, the district court construed the word "generate" as "record in parallel from the video image data."

At the summary judgment stage, GoPro argued that the claims were ineligible under § 101. At step one of Alice, the district court held that representative claim 11 is directed to the abstract idea of "creating and transmitting video (at two different resolutions) and adjusting the video's settings remotely." At step two of Alice, the district court held that the representative claim recites only functional, results-oriented language with "no indication that the physical components are behaving in any way other than their basic, generic tasks." Accordingly, the district court concluded that the claims were ineligible under § 101. Contour appealed to the CAFC.

Concerning step one of Alice, the CAFC noted that examining the "focus of the claimed advance over the prior art" and ascertaining the "basic character" of the claimed subject matter is essential. However, the CAFC cautioned against "describing the claims at a high level of abstraction, divorced from the claim language itself" while doing so.

The CAFC states that when evaluating the focus of the claimed advance, it looks at whether the claims are directed to "a specific means or method that improves the relevant technology" rather than being directed to "a result or effect that itself is the abstract idea." Therefore, "an improved result, without more, is not enough to support patent eligibility at Alice step one."

Based on these guidelines, the CAFC held that representative claim 11 is directed to a specific means of improving the relevant technology. The claim requires a specific technological means: parallel data stream recording with low-quality recording wirelessly transferred to a remote device. This particular technology improves the real-time viewing capabilities of a P.O.V. camera recording on a remote device.

The CAFC noted that the district court's rejection of the claims was based on their characterizing the claims at a high level of generality, disregarding the disclosed technological means for achieving the technological result. This generalized articulation of the claimed advance led to an incorrect conclusion that the claims were drawn to an abstract idea.

Regarding step one of Alice, GoPro further argued that the claims employ known or conventional components that existed in the prior art at the time of the invention. The CAFC clarified that "even so, that alone does not necessarily mean that the claim is directed to an abstract idea at step one." Accordingly, the CAFC reversed the district court's invalidity determination under § 101.

Author's Notes:

While the subject matter of representative claim 11 is a POV camera whose structural limitations include a lens, an image sensor, a wireless connection protocol device, a camera processor, and a remote device, these were not the focus of the § 101 rejection. Instead, it was the process implemented by the camera processor of generating parallel data stream recordings with a low-quality recording wirelessly transferred to a remote device. This recited structure is similar to a business-like process implemented by a system whose structural components include server and client computers, a network interconnecting these computers, data inputs and outputs, and processors within the computers. The processors process the input and output data in a claimed manner that often is the focus of a § 101 rejection that overgeneralizes the claimed processes and ignores their specific steps or characterizes them as conventional.

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