By Amanda Liverzani – Edited by Mengyi Wang
Digitech Image Technologies, LLC v. Electronics For Imaging, Inc., 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618 (Fed. Cir. July 11, 2014)
In Digitech Image Technologies, LLC v. Electronics For Imaging, Inc., the Federal Circuit embraced the opportunity to apply the Supreme Court’s recent decision regarding the patentability of abstract ideas in Alice Corp. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298 (June 19, 2014) to resolve a question of subject matter eligibility under 35 U.S.C. §101. Digitech Image Technologies (“Digitech”) filed infringement suits against 32 defendants in the U.S. District Court for the Central District of California alleging infringement of a patent “directed to the generation and use of an ‘improved device profile’ that describes spatial and color properties of a device within a digital image processing system.” 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618 (Fed. Cir. July 11, 2014). Slip op. at 5–6. Several defendants filed for summary judgment on the basis that the asserted claims of the Patent-in-Suit—U.S. Patent No. 6,128,415 (“the ‘415 patent”) —were invalid under Section 101. Id. at 6. The district court granted the motions, finding that the claims were subject matter ineligible. Id.
The ‘415 patent claims a “device profile” and a method for creating an improved device profile for use in digital imaging. Id. at 4. A digital image is typically captured by a “source device,” like a digital camera, and then transferred to an “output device,” like a monitor or printer. Id at 5. In the transfer process the image is distorted because of the differences in information, such as color ranges, stored by the source device and readable by the output device. Id. The ‘415 patent proposed a “device independent solution” to the distortion issue through the generation of device profiles containing information about both source and output devices. Id. Unlike prior art which only described device profiles covering color ranges, the ‘415 patent discloses device profiles consisting of color ranges and spatial properties. Id. at 5–6.
On appeal, Digitech argued that the district court erred in finding that the device profile claim was “directed to a collection of data that lacks tangible or physical properties” and that the method claims “encompass an abstract idea.” Id. at 6. The Federal Circuit rejected both arguments by Digitech, affirming the district court’s decision in an opinion authored by Circuit Judge Reyna. Id. at 7.
The court first considered the device profile claims. Digitech argued that the device profile constituted a tangible object and therefore meets subject matter eligibility under Section 101. Id. Relying on In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) where signals embedded in supplemental data were held ineligible for patent protection under Section 101, the court determined that the device profile, as a collection of data, was directed to non-tangible information and was thus ineligible for patent protection. Id. at 7–10.
In relation to the method patent claims, the court applied the Supreme Court’s recent Alice decision reaffirming that abstract ideas, absent additional inventive components, are ineligible subject matter under Section 101. Id. at 10–11. The ‘415 patent, according to the court, was directed to an ineligible abstract idea because it merely described a process for organization information and was not “tied to a specific structure or machine.” Id. at 11. Having affirmed the lower court’s invalidation of the asserted claims based on Section 101, the court held that the lower court did not err in granting summary judgment in favor of the defendants. Id. at 13.
Additional analysis and discussion of the court’s decision, particularly its application of Alice, is available at Patent Docs, Patently-O, Washington Examiner, and Law.com.