Contour IP Holdings, LLC v. GoPro, Inc., No. 3:17-cv-4738-WHO (N.D. Cal.).
Plaintiff Contour IP Holdings, LLC sued GoPro for infringing U.S. Patent Nos. 8,890,954 and 8,896,694. The patents are directed to point-of-view digital video cameras. A representative claim recites such a camera—generally comprising four elements: a lens; an image sensor configured to capture light propagating through the lens and produce video image data; a wireless connection protocol device configured to send image content to a portable computing device; and a camera processor configured to receive the video image data from the sensor—generates first and second image streams, receives control signals from the computing device and adjusts settings of the video camera based on the control signals.
The court analyzed eligibility using the Supreme Court’s two-step Alice framework. In step one, a court determines whether the claims are “directed to” a patent-ineligible concept, such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two and considers “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id.
Addressing step one, the court cited Federal Circuit precedent stating that claims reciting a mechanical device, such as a camera, may nonetheless be directed to an abstract concept, and instructing that the analysis focuses on “what the patent asserted to be the focus of the claimed advance over the prior art.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020). The proffered advance over the prior art was that the device creates two video streams, one lower and one higher resolution, and transmits the lower resolution stream to a portable computing device while saving the higher resolution stream. A further stated advance is that the camera is configured to receive control signals from the computing device, which can adjust its settings.
The court found that this proffered advance is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.” Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir. 2017). The abstract idea is creating and transmitting video at two different resolutions and adjusting the video’s settings remotely. The court determined that receiving, generating, storing and transmitting video are abstract concepts. The court found that the claims described the implementation in “purely functional terms” and did not recite any “technical requirements” or “particular hardware” other than the generic “lens and image sensor,” generic “wireless connection protocol device” and generic “camera processor” to execute the abstract idea.
Addressing step two, the court decided that the elements of the claim did not transform the nature of the claim into something patent-eligible because “the claim only recites functional, ends-oriented language and there is no indication that the physical components are behaving in any way other than their basic, generic tasks.” The court did not find any “additional feature” showing that the claim is “‘more than a drafting effort designed to monopolize the’ abstract idea.” Contour relied on certain Bluetooth technology disclosed in the specification, arguing that it shows “Contour had to make changes to the firmware for the processor” in a manner that had never been done before. The court, however, found that none of this is claimed, and that “Contour instead claimed a broader universe of any technology that performs its abstract idea so long as it meets the minimal criteria of its generic elements.”
Practice Tip
Patent Owners should avoid describing and claiming the advance over the prior art in purely functional terms, in a result-oriented way that amounts to encompassing the abstract solution no matter how implemented. Instead, Patent Owners should describe and claim technical details for tangible components in the claimed system, showing that such components are technologically innovative and not generic. For computer-implemented inventions, this may include a specific set of computer digital structures to solve a specific computer problem.