Coding error: Court rejects software patent

November 15, 2017
Patterson Thuente IP

Oops — they did it again. The Federal Circuit Court of Appeals has rejected yet another software patent. The court, which hears all appeals involving patents, found that the patent was for a patent-ineligible invention.

Snapshot of the case

RecogniCorp, LLC, owns a patent for a method and apparatus for building a composite facial image using “constituent parts.” Previously, composite facial images typically were stored in file formats that required significant memory, and compressing the images often reduced image quality. Digital transmission could be difficult. The patent encodes images at one end using a mathematical formula in a way that requires less memory and bandwidth and decodes the images at the other end of transmission.

The company sued Nintendo Co., Ltd., for infringement. The trial court dismissed its lawsuit before trial, ruling that the invention wasn’t patent-eligible, and RecogniCorp appealed.

The court’s focus

On review, the appellate court applied the so-called Alice test for identifying patents that cover nothing more than abstract ideas. First, the court determines whether the claimed invention is a patent-ineligible abstract idea. If so, it determines whether the invention includes an “inventive concept” that transforms it into a patent-eligible application of the abstract idea.

When dealing with software patents, the first inquiry is often whether the invention is a specific means or method for improving technology or just an abstract end-result. The court found that the patent claim here covered the abstract idea of encoding and decoding. According to the court, adding one abstract idea (math) to another abstract idea (encoding and decoding) doesn’t make a claimed invention nonabstract.

Proceeding to the second step, the court considered RecogniCorp’s contention that its encoding process, using its specific algorithm, transformed the abstract idea into a patent-eligible invention. It rejected the argument, finding that the addition of a mathematical equation that simply changes the data into other forms of data couldn’t save the patent.

The court noted that RecogniCorp didn’t allege a particularized application of the abstract idea. The Federal Circuit acknowledged that the patent claimed the use of a computer, but found that it also did exactly what the court has previously warned a software patent may not do — tell a user to take an abstract idea and apply it with a computer.

The big picture

Some observers point to the court’s ruling as another nail in the coffin for software patents, but that’s probably an overstatement. The court’s various rulings applying the Alice test have largely been fact-specific, indicating the need to take the test into account in the patent drafting stage. 

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RecogniCorp, LLC v. Nintendo Co., Ltd., No. 16-1499, April 28, 2017 (Fed. Cir.)

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