Thursday, May 19, 2016

Lemley wins in TLI case

From the decision:

TLI Communications LLC alleges that the defendants
infringe a patent relating to a method and system for
taking, transmitting, and organizing digital images. The
district court dismissed the complaint after concluding
that the patent-in-suit fails to claim patent-eligible subject
matter under 35 U.S.C. § 101, and that, in the alternative,
claims 1, 25, and their dependent claims are
invalid for failing to recite sufficient structure as required
by 35 U.S.C. § 112 ¶ 6. Because we agree with the district
court that the patent-in-suit claims no more than the
abstract idea of classifying and storing digital images in
an organized manner, we affirm the district court’s judgment
and do not reach the § 112 ¶6 issue.

From within the decision

the specification’s emphasis that the present invention
“relates to a method for recording, communicating and
administering [a] digital image” underscores that claim
17 is directed to an abstract concept. ’295 patent, col. 1
ll. 10–12. TLI’s characterization of the claimed invention
also supports our conclusion at step one. In its briefs, TLI
essentially parrots the disclosure of the ’295 patent,
asserting that claim 17 is “directed to a method for recording
and administering digital images.” Appellant’s Br. 28.

We recently clarified that a relevant inquiry at step
one is “to ask whether the claims are directed to an improvement
to computer functionality versus being directed
to an abstract idea.” See Enfish, LLC v. Microsoft
Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. May 12,


The specification does not describe a new telephone, a
new server, or a new physical combination of the two.
The specification fails to provide any technical details for
the tangible components, but instead predominately
describes the system and methods in purely functional
terms. For example, the “telephone unit” of the claims is
described as having “the standard features of a telephone
unit,” id. at col. 5 ll. 54–58, with the addition of a “digital
image pick up unit for recording images,” id. at col. 5 ll.
58–61, that “operates as a digital photo camera of the
type which is known,” id. at col. 6. ll. 1–2. Put differently,
the telephone unit itself is merely a conduit for the
abstract idea of classifying an image and storing the
image based on its classification. Indeed, the specification
notes that it “is known” that “cellular telephones may be
utilized for image transmission,” id. at col. 1 ll. 31–34,
and existing telephone systems could transmit pictures,
audio, and motion pictures and also had “graphical annotation
capability,” id. at col. 1 ll. 52–59.


For these same reasons, the claims are not directed to
a solution to a “technological problem” as was the case in
Diamond v. Diehr, 450 U.S. 175 (1981). See OIP Techs.,
788 F.3d at 1364 (“[W]e must read Diehr in light of Alice,
which emphasized that Diehr does not stand for the
general proposition that a claim implemented on a computer
elevates an otherwise ineligible claim into a patenteligible
improvement.”). Nor do the claims attempt to
solve “a challenge particular to the Internet.” DDR
Holdings, LLC v., L.P., 773 F.3d 1245, 1256–
57 (Fed. Cir. 2014); cf. Intellectual Ventures I, 792 F.3d at
1371 (because the patent claims at issue did not “address
problems unique to the Internet, . . . DDR has no applicability.”).
Instead, the claims, as noted, are simply directed to
the abstract idea of classifying and storing digital images
in an organized manner. Consistent with the Supreme
Court’s rejection of “categorical rules” to decide subject
matter eligibility, Bilski v. Kappos, 561 U.S. 604, 610
(2010), we have applied the “abstract idea” exception to
encompass inventions pertaining to methods of organizing
human activity. See, e.g., Intellectual Ventures I, 792 F.3d
at 1367 (finding the claim at issue “not meaningfully
different from the ideas found to be abstract in other
cases before the Supreme Court and our court involving
methods of organizing human activity”).


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