SCOTUS’s “Alice” analysis encourages analyzing patent claims at a high level of abstraction. The Contour vs GoPro decision helps limit this.
When a patent examiner wants to reject a claim under “Alice” “35 USC 101”, they often use a simple trick. They examine the claim at an overly high level of abstraction and ignore most of the claim language. They rationalize this by arguing that the ignored claim terms only recite “generic” components. In this, they rely on earlier SCOTUS decisions that, for example, denigrated computer processors as being merely “generic components.” Somehow (don’t ask me why), “generic components” can be ignored. The examiner then asserts that the claim is “abstract” and rejects it.
If an examiner (or Judge) wants the claim to pass, they analyze it at a higher level of detail. If they wish the claim to fail, they analyze it at a lower level of detail. So, it is all very circular and conclusory. Unfortunately, there were few legal precedents to defend against this practice.
Courts have been doing this as well. Fortunately, the US Federal Circuit Court finally called out this practice in the recent Contour vs GoPro decision. They also provided some excellent legal arguments for limiting it.
The Coutour IP vs GoPro case
Here, Contour IP invented US patent 8,890,954 (see claim 11). This was for an improved hands-free point-of-view video camera for mounting on sports helmets and the like. Here, the user isn’t able to precisely control the camera. Contour solved the control problem by having the camera wirelessly transmit a lower-quality video copy to a wireless controller. In parallel, the camera also stored a high-quality video for later use. This lets the user get a rough idea of what the camera sees and adjust the camera. The result is an improved, high-quality, stored video.
GoPro liked the idea too much, infringed, and spent years fighting this patent. Eventually, after earlier court losses, GoPro asked a California district court for summary judgment. They asked the district court to strike the patent as being invalid under 35 USC 101 “Alice.”
The district judge struck it. He held that the patent was: “directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video settings remotely…” There was “no indication that the physical components were behaving in any way other than their basic generic tasks.” He cited this as the legal justification to ignore these components.
Why do the courts do this?
US courts hate business method inventions involving processors. This is because these patents interfere with commerce, resulting in big-money opposition. Alice allows US courts to invalidate by asserting that the claims are “abstract” and that processors are merely “generic components.” Judge Orrick cited an earlier financial patent case to justify his action.
Unfortunately, doing this for all inventions throws the baby out with the bathwater. By contrast, other countries solve the problem by banning business-type patents. However, Congress has not acted here. The US courts don’t have enough authority to ban financial patents directly. So instead, they have decided on a roundabout method that screws up other patents.
By analogy, consider the Rube Goldberg “invention” image at the top. This is for a “self-operating napkin.” There is “no indication that the physical components are behaving in any way other than their basic generic tasks.” Let’s analyze this using typical “Alice” reasoning. Is the invention “abstract” because it is merely “directed to operating a napkin?” Goldberg’s device may be silly. Still, it does not look abstract. The problems with ignoring the invention’s “generic” components should be evident.
The Federal Circuit steps in
The court argued that the circuit court’s approach was flawed because the district court judge:
- Failed to examine the focus of the claimed advance over the prior art
- Did not ascertain the basic character of the claimed subject matter
- Described the claims at a high level of abstraction that was divorced from the claim language
- Did not determine if the claims are directed to a means or method that improves the relevant technology rather than to an “abstract idea.”
The Federal Circuit argued that:
Here, when read as a whole, claim 11 is directed to a specific means that improves the relevant technology. Claim 11 recites an improved POV camera through its combination of claim limitations and the requirement that the claimed POV camera processor be configured to record low and high-quality data streams in parallel, followed by the low-quality data stream’s wireless transfer to a remote device…The claims thus require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.
CONTOUR IP HOLDING LLC, vs GOPRO, INC., US Federal Circuit 22-1654, 9/9/2024
The Federal Circuit further noted:
As we have noted, the practice of “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” [Enfish] … in this case, the district court’s conclusion that the claims were “directed to a result or effect that itself is the abstract idea” disregards the disclosed technological means for obtaining a technological result.
CONTOUR IP HOLDING LLC, vs GOPRO, INC., US Federal Circuit 22-1654, 9/9/2024
So, Contour IP prevailed (for now). However, the legal process is both slow and uncertain. Hopefully, this decision will eventually appear in the MPEP as a guidance for USPTO examiners.