Federal Circuit Finds Conventional Components Can Provide a Technological Advantage at Alice Step 1

On September 9, the Federal Circuit reversed a Northern District of California decision that invalidated two video camera patents as being directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. Contour IP Holding, LLC v. GoPro, Inc., No. 2022-1654, 2022-1691 (Fed. Cir. Sep. 9, 2024). The result in this case seems to mesh with the United States Patent and Trademark Office’s (USPTO) recently issued subject matter eligibility guidance. (See Fish & Richardson’s analysis of that guidance here.)

Technology

Contour IP Holdings, LLC, owns U.S. Patent Nos. 8,890,954 and 8,896,694, which are directed to portable point-of-view (POV) cameras. The patents disclose a video camera that is configured to generate two video recordings in parallel — one in high quality and one in low quality — with the low-quality recording being wirelessly streamed to a remote device (e.g., a smartphone). This allows users to mount a POV camera (e.g. a helmet cam) while being able to see the camera’s video stream in real time (and make adjustments to it) on their phone. The high-quality stream is saved to the camera for later use.

Background

Contour sued GoPro in the Northern District of California, arguing that several of GoPro’s products infringed the ‘954 and ‘694 patents. GoPro moved for summary judgment on the grounds that the asserted claims were patent ineligible under § 101. The District Court agreed with GoPro, finding at Alice step one that the asserted claims are directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s setting remotely.” Contour IP Holding, LLC v. GoPro, Inc., No. 3:17-cv-04738-WHO, 2022 WL 658553, at *4 (N.D. Cal. Mar. 4, 2022) (“Decision”). At Alice step two, the District Court found that the claims recite only functional, results-oriented language with “no indication that the physical components are behaving in any way other than their basic, general tasks.” Id. at *7.

Analysis

The Federal Circuit reversed, finding that the claims were not directed to patent ineligible subject matter at Alice step one.

In an opinion by Judge Reyna, the court emphasized determining the “focus of the claimed advance over the prior art.” Citing Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). To determine the focus of the claimed advance, the court looks to whether the claims are directed to “a specific means or method that improves the relevant technology” rather than simply being directed to “a result or effect that itself is the abstract idea.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).

The court found that the representative claim is not directed to an abstract idea but rather to a specific means that improves the relevant technology. The court found that the claim recites an improved POV camera through its combination of a POV camera processor that is configured to record low- and high-quality data streams in parallel, followed by the low-quality data stream being wirelessly transferred to a remote device. As such, the claim requires specific technological means — namely, parallel data stream recording with the lower-quality recording being wirelessly transferred to a remote device — that provide a technological improvement in real-time viewing capabilities on a remote device. Looking to the specification, the court found that it discloses improving POV camera technology through a specific means reflected by the claims.

The court faulted the District Court for characterizing the claims at an impermissibly high level of generality. As the court explained in Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), describing the claims at too high a level of abstraction and untethered from the claim language all but ensures that the exceptions to § 101 swallow the rule. By finding that the claims were “directed to a result or effect that itself is the abstract idea,” the court found that the District Court had disregarded the disclosed technological means for obtaining a technological result. Decision, 2022 WL 658553, at *4.

The court rejected the argument that the claims describe only wireless data transfer within a particular technological environment. Instead, the claims enable the claimed POV camera to operate differently than it otherwise would have by both recording multiple video streams in parallel and wirelessly transferring only one video stream to a remote device. Thus, the court found that the claim is directed to a technological solution to a technological problem.

The court also rejected the notion that conventional components cannot provide a technological improvement under Alice step one. The court explained that that being conventional alone does not necessarily mean the claim is directed to an abstract idea at Alice step one. This point thus seems to mesh with the USPTO’s most recent subject matter eligibility guidance, which clarifies that examiners need to consider additional elements in combination with any judicial exception when determining whether the claims integrate an ineligible concept into a practical application (USPTO Step 2A, Prong 2).

Takeaways

The primary takeaways from this case are that patent applicants and patent owners should be on the lookout for claims that are characterized at too high a level of generality and to push back against assertions that inventions that recite conventional components cannot provide a technological advance under Alice step one.