In TLI Communications LLC, v. AV Automotive, LLC, the Federal Circuit affirmed the Eastern District of Virginia’s decision to invalidate a patent relating to a method and system for taking, transmitting and organizing digital images. In an opinion authored by Judge Hughes, the Federal Circuit distinguished its previous decision in Enfish by noting that “the claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.”
The Federal Circuit evaluated step one of the Alice test by considering representative claim 17 finding that “[w]hile claim 17 requires concrete, tangible components such as ‘a telephone unit’ and a ‘server,’ the specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner.” Judge Hughes went on to note that “[t]he specification fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms.”
Regarding step two of Alice, the Federal Circuit found that the telephone unit of claim 17 “simply provides the environment in which the abstract idea of classifying and storing digital images in an organized manner is carried out.” Likewise, “the server fails to add an inventive concept because it is simply a generic computer that ‘administer[s]’ digital images using a known ‘arbitrary data bank system.’”
TLI Communications LLC v. AV Automotive, LLC, Case No. 2015-1372 (lead case) (Fed. Cir. May 17, 2016).