07/16/14

Digitech Image Tech. v. Electronics for Imaging: Apparatus and Process Claims Directed to Data Fail to Meet 101


Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleDigitech Image Tech., LLC v. Electronics for Imaging, Inc., No. 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).
Issues[1] First, Digitech asserts that the district court erred in finding that the device profile claims are directed to a collection of data that lacks tangible or physical properties. [2] Second, Digitech argues that the district court erred in finding that the asserted method claims encompass an abstract idea and are not tied to a specific machine or apparatus.
Digitech Image Tech., LLC at *6 (text added).
Holdings
[1] We […] hold that the device profile claims of the ’415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible [because the claimed “device profile” is a collection of intangible color and spatial information, and there is nothing in the claims that require said information to be in a tangible medium].
Id. at *10.
[2] [W]e hold that the process described in the asserted claims is directed to an abstract idea and is not patent eligible under section 101 [because the claims recite an abstract process of gathering and combining data that does not require input from a physical device].
Id. at *13.
 
 
Procedural HistoryIn this appeal, we address the subject matter eligibility of claims in U.S. Patent No. 6,128,415 (“the ’415 patent”) directed to a device profile and a method for creating a device profile within a digital image processing system. The district court concluded that the asserted claims were invalid under 35 U.S.C. § 101.
Digitech Image Tech., LLC at *4.
 
 
Legal Reasoning (Moore, Reyna, Hughes)
[1] Apparatus ("Device Profile") Claims
Legal Standard: 101Pursuant to section 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. For all categories except process claims, the eligible subject matter must exist in some physical or tangible form. To 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.” Burr v. Duryee, 68 U.S. 531, 570 (1863). To qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).
Digitech Image Tech., LLC at *7.
Representative Claims
1. 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 dependent transformation of color information content of the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

Id. at *8.
26.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

data for describing a device dependent transformation of spatial information content of the image to a device independent color space,

wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.

Id. at *8.
Device Only Encompasses Information[T]he device profile is comprised of two sets of data that describe a device dependent transformation—one set of data for color information and the other set of data for spatial information. The 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 claims are instead directed to information in its non-tangible form. Hence, the device profile claimed in the ’415 patent does not fall within any of the categories of eligible subject matter under section 101.
Id. at *9.
Data does not Fall under any 101 CategoryThe claims’ only description of the device profile is that it comprises “first data for describing” color information and “second data for describing” spatial information. The claims encompass all embodiments of the information contained in the device profile, regardless of the process through which this information is obtained or the physical medium in which it is stored. Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.
Id. at *9.
[2] Method Claims
Legal Standard: 101 ExclusionsClaims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. Chakrabarty, 447 U.S. at 309. The Supreme Court recently reaffirmed that fundamental concepts, by themselves, are ineligible abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298, slip op. at 10 (June 19, 2014). In determining whether a process claim recites an abstract idea, we must examine the claim as a whole, keeping in mind that an invention is not ineligible just because it relies upon a law of nature or mathematical algorithm. As noted by the Supreme Court, “an application of a law of nature or mathematical formu- la to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). A claim may be eligible if it includes additional inventive features such that the claim scope does not solely capture the abstract idea. Alice Corp., 573 U.S. ___, slip op. at 6.
Digitech Image Tech., LLC at *10-11.
Representative Claim10.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 device response characteristic functions; and

combining said first and second data into the device profile.

Id. at *11-12.
Directed to Abstract IdeaThe two data sets are generated by taking existing information—i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions—and organizing this information into a new form. The above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device. As discussed above, the two data sets and the resulting device profile are ineligible subject matter. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978) (internal quotations omitted).
Id. at *12.
Not Enough Structure Tied the Method to an Image ProcessorThe claim generically recites a process of combining two data sets into a device profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image. The only mention of a “digital image reproduction system” lies in the claim’s preamble, and we have routinely held that a preamble does not limit claim scope if it “merely states the purpose or intended use of an invention.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006).
Id. at *12-13.
Conclusion
For the reasons set forth above, we affirm the decision of the district court.
Digitech Image Tech., LLC at *13.
 
 
 
© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy