Digitech v. Electronics Imaging: the first application of Alice v. CLS Bank by the Federal Circuit
Earlier this month, a panel of the Federal Circuit issued its first opinion to address the patent eligibility of a software invention since the Supreme Court's decision on that subject in Alice v. CLS Bank.
This opinion, Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., focused on a claim covering methods of generating device profiles for describing properties of a device in a digital image reproduction system, and on claims covering the devices profiles themselves. At the district court level, both sets of claims were invalidated. For the device profile claims, the district court judge found that those claims were simply information and so could not be treated as potentially patentable machines, methods, manufactures or compositions of matter. For the method claim, the district court found that, while some methods could potentially be patented, Digitech's method of generating device profiles was claimed in a way which encompassed the abstract idea of organizing data through mathematical correlations, and so was also ineligible for patent protection.
On appeal, Digitech argued that the district court's findings should be reversed based on connections between the claimed profiles and methods and the systems in which they could be used. For device profile claims, Digitech argued that the device profiles were an "integral part of the design and calibration of a processor device within a digital image processing system" and that they existed as a tag file appended to a digital image. For the method claim, Digitech argued that that claim was patent eligible because it described a process for generating a device profile that is specifically tied to a digital image processing system and is integral to the transformation of a digital image.
In its opinion, the Federal Circuit rejected both of Digitech's arguments, focusing primarily on the lack of an explicit link to a physical processing system in Digitech's claims, and also indicating how arguments of the type presented by Digitech could fit within the overall framework from Alice. For the device profile claims, the Federal Circuit found that the claim language did not contain any description of the device profile as being a tag file. Instead, the claim language described the device profile in terms of a first and second data set. Since the device profile did not require any physical embodiment, it was an intangible collection of information and ineligible for patent protection. For the method claim, the Federal Circuit stated that it claimed an abstract idea because it describes a process of organizing information through mathematical correlations and was not tied to a specific structure or machine. It then explained that "Contrary to Digitech's argument, nothing in the claim language expressly ties the method to an image processor" and that because the method claim was "'so abstract and sweeping' as to cover any and all uses of a device profile" it was not patent eligible under section 101.
While the Federal Circuit's opinion in Digitech was brief, some lessons can be drawn from it regarding how to present arguments regarding the subject matter eligibility of software implemented inventions. Digitech indicates that a party arguing against eligibility may be able to establish that a claim is directed to an abstract idea by showing that there is no explicit link to a specific structure or machine in the claim language. Such a party could then argue that there is nothing in the claim which would transform the abstract idea into a patentable invention by focusing on the claim's breadth and trying to establish that it covers all potential uses of the abstract idea. Conversely, Digitech indicates a party arguing in favor of eligibility may be able to show that a claim isn't directed to an abstract idea by pointing to specific structures or machines which are explicitly recited in the claim itself. However, Digitech also shows that it can be dangerous to argue solely based on ties to specific machines or structures. This is because, once the Federal Circuit had rejected the tie to machine argument in determining the method claim was directed to an abstract idea (the first step in the framework used by the Supreme Court in Alice), there were no further arguments for the Federal Circuit to address in determining whether the elements that were recited in the claim, either considered separately or as a whole, contained a sufficient inventive concept to transform the claim from one directed to an abstract idea into a patent eligible application (the second step in the framework used by the Supreme Court in Alice). Accordingly, Digitech indicates that a party arguing in favor of eligibility may want to present arguments for why a claim does not cover all uses of an abstract idea even if it is treated as not being tied to a specific structure or machine.
For further information, please contact Doug Gastright, William Morriss or any other member of Frost Brown Todd's Intellectual Property Law and Litigation Practice Group.