Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. (Fed. Cir. 2014)

By Michael Borella --

Less than four weeks after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank International, the Federal Circuit has used the holding of that case to strike down a patentee's claims under 35 U.S.C. § 101.

Digitech sued Electronics For Imaging and a host of co-defendants for allegedly infringing its U.S. Patent No. 6,128,415.  The '415 patent relates 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."  By creating a number of such device profiles for input and output devices (e.g., digital cameras, monitors, televisions, etc.), the patent purports to be able to more accurately translate color representations between these devices.

In July 2013, several defendants filed summary judgment motions, contending that Digitech's asserted claims were directed to patent-ineligible subject matter.  The presiding United States District Court for the Central District of California granted the motion.  Digitech appealed.

Digitech's claim 1 recites:

    A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
    first data for describing a device de-pendent transformation of color information content of the image to a device independent color space; and
    second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

The Federal Circuit observed that claim 1 is "comprised of two sets of data that describe a device dependent transformation" and that "[t]he asserted claims are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system."

The Court invoked 1863's, Burr v. Duryee, for the notion that "[t]o qualify as a machine under section 101, the claimed invention must be a concrete thing, consisting of parts, or of certain devices and combination of devices."  Claim 1 does not meet this standard because it recites an intangible arrangement of information, and therefore does not fall into any of the categories of § 101.

The Court further found that claim 1 was even broader than the patent-ineligible claims of In re Nuijten, where an applicant attempted to obtain patent protection on a signal.  Particularly, the claims of Nuijten required the physical, yet transitory, embodiment of a signal, whereas claim 1 required no physical embodiment at all.

As an aside, this is not the first time that the Federal Circuit has held that a data structure falls outside the ambit of § 101.  In re Warmerdam, decided in 1994, stands for the same principle.  However, In re Lowry, decided in the same year, suggests that claiming such a data structure as being incorporated in "a memory" would be enough for the claim to fall within the statutory category of article of manufacture.

Digitech's claim 10 recites:

    A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:
    generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
    generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and de-vice response characteristic functions; and
    combining said first and second data into the device profile.

The Court found that this claim merely "recites a process of taking two data sets and combining them into a single data set, the device profile."  As such, it was directed to an abstract idea.  Citing to Parker v. Flook (which has a new life after CLS Bank and Mayo Collaborative Services v. Prometheus Laboratories, Inc.), the Court stated that "[w]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible."  Despite the claim including reference to "a digital image reproduction system," there is no tie of the claimed method to a physical, tangible device.  Thus, the Court found the claim lacking any additional inventive features that would restrict its scope to less than that of the abstract idea itself.

Image processing a hot technology right now.  Look no further than your smartphone to see image processing innovation at work in the real world.  Does this case result in such innovations being unprotectable?  No, probably not.  Not unlike the claims in CLS Bank and Bilski v. Kappos, Digitech's claims encompass disembodied methods and structures.  While it is hard to fault the Federal Circuit for affirming the invalidity of the claims in the case, one has to wonder if the addition of a few well-placed hardware limitations to claims 1 and 10 would have resulted in a different outcome.

Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. (Fed. Cir. 2014)
Panel: Circuit Judges Moore, Reyna, and Hughes
Opinion by Circuit Judge Reyna

Comments

[Paul Cole]

The situation here has striking resemblance to the well-known EPO Appeal Board decision in in T 0208/84 Computer-related invention/VICOM. In that case the originally presented claim which was rejected was to a method for digitally filtering data and was too abstract. The claim that was allowed was to a method of digitally processing images in the form of a two-dimensional data array.

In the present case the corresponding PCT application was brought into effect in the EPO and the novelty report was favourable, but the application was abandoned before the first examination report issued. We cannot therefore be certain how the application would have been treated, but it would almost certainly have received similar objections to the original Vicom claim.

It is well worth downloading and reading the specification. The disclosure is slightly less telegraphic when viewed in the light of the drawings, but the disclosure is startlingly sparse. There is a lack of worked embodiments. Claim 18 is in means + function form and reads:

A digital image processing system using a device profile for describing properties of a device in the system to capture, transform or render an image, said system comprising:
means for utilizing first data of the device profile for describing a device dependent transformation of color information content of the image to a device independent color space through use of chromatic response characteristic functions; and
means for utilizing second data of the device profile for describing a device dependent transformation of spatial information content of the image in said device independent color space through the use of spatial characteristic functions describing image spatial transform characteristics in said device independent color space.

With current interpretations of 35 USC 112(f) it is debatable whether sufficient structure is disclosed to support the "means" language. There are black boxes shown in the drawings, but so far as information is concerned the boxes are largely empty. Claim 10 is similarly in step + function language, although the implications of that were apparently not considered.

This is a classic distributed system invention with a transmitter (a camera), an intermediate processor and a receiver (a display or printer). Where is the device profile functionality to be located - does it form part of the camera or part of the receiver/printer or both? Most likely it is built into the camera, in which a claim to a camera incorporating the technology would have been appropriate, and a description of what happens starting with light transmitted from the lens to the sensing element and ending with a transmitter interface for transmitting the processed image signal would have helped. This case is arguably a classic example of short-sightedness and failure to describe how the invention fits into and interfaces with the larger system in which it is intended to be used.

[Skeptical]

"one has to wonder if the addition of a few well-placed hardware limitations to claims 1 and 10 would have resulted in a different outcome."

One does not have to wonder too deeply, as the court all but announces such when it rejects the arguments of Digitech when Digitech tried to assert that the claims read on software and/or hardware.

The court said "no, they do not, thus no patent for you."

[EG]

Michael,

We're now starting to reap the "whirlwind" of Alice Corp. As you point out, there may be issues in Digitech Image under the 6th paragraph of 35 USC 112, but rejecting these claims as covering patent-ineligible subject matter under 35 USC 101 is an utter travesty. So much for hope of "rational reasoning" from our Federal Circuit after the nonsensical decision in Alice Corp.

[Mike Borella]

Skeptical,

Digitech's arguments that the claims in their current form encompassed tangible hardware were doomed to fail, because the claims do not.

What I was referring to is whether the addition of hardware limitations indicating that the method was performed by the camera device or display device would be enough to meet the second prong of the Mayo test.

I am of the mind that linking the method to the tangible act of capturing digital images of a scene would be sufficient.

[GrzeszDeL]

"[T]here may be issues in Digitech Image under the 6th paragraph of 35 USC 112, but rejecting these claims as covering patent-ineligible subject matter under 35 USC 101 is an utter travesty."

This is the same problem as was met in the In re Roslin case. Once upon a time, the Federal Circuit used to believe that “courts should avoid reaching for interpretations of broad provisions, such as §101, when more specific statutes, such as §§ 102, 103, and 112, can decide the case.” MySpace v. GraphOn Corp., 672 F.3d 1250, 1261 (Fed. Cir. 2012). Unfortunately, Mayo (132 S. Ct. at 1303) declared that “[t]his approach… would make the ‘law of nature’ exception to § 101 patentability a dead letter.”

The regrettable follow-on is that the wisdom of MySpace has been lost. Section 101 is now a first recourse, rather than a last recourse. This is a terrible way to run a patent system, but unless Congress steps in, this is what the SCOTUS wants, and we will have to live with it.