U.S. Government Fails in Attempt to Invalidate U.S. Patents under § 101
By Joseph Herndon --
In a bit of an ironic outcome, the U.S. government was unsuccessful in invalidating U.S. patents under § 101. It seems odd that the government issued the patents on the one hand, and later, tried to invalidate them.
Plaintiff, Science Applications International Corp. ("SAIC"), claimed that the U.S. government infringed four patents by entering into contracts with plaintiff's competitors for the procurement of specialized heads up displays ("HUD") and night vision goggles that allegedly use SAIC's patented technology. Defendant, the United States, moved to dismiss for failure to state a claim under Rule 12(b)(6), contending that Plaintiff's patents claim ineligible subject matter under 35 U.S.C. § 101.
The first patent family (the '012 and '103 Patents) are directed to video image registration in a HUD. The '012 Patent describes methods for displaying images on a HUD. The '012 Patent describes that the prior art placed one image on top of another, using a beam combiner, but it could not dynamically compare, adjust, or reposition an image using orientation data such that the narrower field of vision was displayed accurately in the transparent display. The prior technique superimposed by simply placing the narrower field of vision within the broader field of vision. Although a user could view both fields, the user ran the risk of mismatched boundaries, repetitive or obscure images, and the inability to recalculate with movement. The patent claims purport to solve these problems in the process of registering two independently moveable fields of vision. Claim 1 of the '012 Patent is set forth below.
1. A method of registering video images with an underlying visual field comprising the steps of:
(1) determining a source orientation of a video source providing a video feed containing data for a series of video images representing portions of a visual field;
(2) determining a display orientation of a transparent display overlaying the visual field, wherein the video source and the transparent display are independently movable about multiple axes; and
(3) displaying the video images in positions on the transparent display that overlay portions of the visual field represented by the displayed video images,
wherein boundaries of the displayed video images are in registration with boundaries of portions of the visual field represented by the displayed video images.
The '103 Patent is a division of the '012 Patent and has corresponding system claims.
The second patent family (the '230 and '752 Patents) is directed to video image registration and providing supplemental data in a HUD.
The '230 Patent describes that the identification and comparison system dynamically places images within the transparent display such that matching images appear despite movement of either the display or the second video source and without obscuring relevant portions of the scene with mismatched images. The '230 Patent purports to offer an advance over the requirement for manual recalibration found in prior approaches. The patent claims minimize the manual recalibration by using the location comparison data to adjust how subsequent sensor-based locations are determined. The claims thus build on the previous techniques for superimposition by increasing accuracy and decreasing the need for manual adjustments. Claim 15 of the '230 Patent is set forth below.
15. A method, comprising:
(a) receiving video images from a first video source and from a second video source representing portions of an external environment;
(b) receiving motion data indicative of motion of the first and second video sources;
(c) identifying, based on the received motion data, a part of a first video source image that potentially represents a portion of the external environment represented in a part of a second video source image;
(d) evaluating, based on a comparison of data from the first and second video source images, the identification performed in step(c); and
(e) displaying at least a portion of the first video source image and at least a portion of the second video source image such that the second video source image portion overlays a corresponding region of the first video source image portion, wherein the corresponding region represents a portion of the external environment represented in the second video source portion.
The '752 Patent is a continuation of the '230 Patent and has claims of generally the same scope.
The Court followed the two-part Alice/Mayo test for determining whether a patent claims ineligible subject matter. First, a court must determine whether the patent is directed to a patent-ineligible concept, such as an abstract idea. If so, the second step is to determine, considering the claims both individually and as an ordered combination, whether the patent claims sufficiently transform the ineligible subject matter with an inventive concept.
The government's arguments regarding the first and second patent family can be set out together. The government contended that SAIC's patents claim the abstract idea of superimposing a video image in a location on a display, thereby preempting future innovation in how images can be manipulated to appear in the same field of vision.
SAIC responded that none of the claims are directed to the underlying idea of superimposing images. Rather, SAIC contended that its patents focus on solving a problem in the technology available for registering images by combining orientation sensors and data, inertial sensors and motion data, boundary registration, and independently movable components.
The Court noted that, at a high level, all four claims undoubtedly involve the idea of superimposition of images. But the Federal Circuit has admonished that just because the claims involve an abstract idea does not mean that they are directed to an abstract idea. The Court framed the question as whether the claims are directed to the idea of superimposing one image on another or whether the claims "recite more than a mere result."
The Court gave heavy weight to the claims being similar to patent claims previously found to satisfy § 101 in Thales Visionix, in which claims offered an improvement to accuracy when "measuring relative position and orientation of a moving object on a moving reference frame." Using a comparative analysis, it seems for this reason alone, the Court found the patent claims at issue here to also satisfy § 101.
In addition, the Court found that the '012 method claim and the '103 system claim are directed to improving prior processes by using known components in an unconventional way to register images within accurate boundaries. The Court also found that the '752 and '230 method claims further describe how to combine known components, including inertial sensors, to communicate motion data such that the images can be accurately aligned and the calibration process can be tied to the collected location data. The claims, therefore, recited more than a mere result by including details for carrying out the claimed invention.
The Court strictly followed the Alice/Mayo test for section 101, and noted that this test is not concerned with whether an artisan skilled in the art can perform the method claimed by the patent nor whether the claim language is sufficiently definite, novel, or non-obvious, but rather whether the character of a claim as a whole is directed to a patent-ineligible subject matter. Taken on the face of the claims and the specification, the Court found that SAIC's patents combine existing computer technology, sensors, and calculations in an unconventional way in order to reach a solution to the problem of alignment and consistently accurate display. Because SAIC did not stop at the concept of superimposition (in the abstract) but instead provided a solution for achieving accuracy and consistency in image registration, SAIC's claims are not directed to an abstract idea.
The Court thus denied defendant's motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6) since the claims satisfied step 1 of the Alice/Mayo test (and therefore, it was unnecessary to progress to Alice/Mayo step 2).
Science Application International Corp. v. United States (Fed. Cl. 2018)
Order by Senior Judge Eric G. Bruggink