In re: TLI Communications LLC Patent Litigation
Docket No. 2015-1372, -1376, -1377-79, -1382-85, -1417, -1419, -1421
DYK, SCHALL, HUGHES
May 17, 2016
Brief Summary: DC finding that TLI’s US 6,038,295 relating to the uploading of digital photos from a mobile device such as a cell phone claimed patent-ineligible subject matter (§ 101) affirmed.
Summary: TLI appealed DC finding that the claims of its US 6,038,295 relating to the uploading of digital photos from a mobile device such as a cell phone claimed patent-ineligible subject matter (§ 101) and, “in the alternative, claims 1, 25, and their dependent claims are invalid for failing to recite sufficient structure as required by 35 U.S.C. § 112, section 6” (not reached in this opinion). Representative claim 17 claims “[a] method for recording and administering digital images” and steps for doing so (“recording…storing the images…transmitting data…receiving the data…extracting classification information…and storing the digital images in the server…”) while claims 1 and 25 include “an apparatus or system.” The DC concluded “the claims are directed to ‘the abstract idea of taking, organizing, classifying, and storing photographs” and did not “give patentable weight to the claims’ recitation of a telephone unit or a server, or to the ‘means for allocating’ limitation in claims 1 and 25”, and therefore granted the defendants motion to dismiss. The DC’s decision was reviewed de novo (OIP Techs., FC 2015). Under the two-part Alice test, the court “‘first determines whether the claims at issue are directed to a patent-ineligible concept,’ such as an abstract idea” and then whether “the elements of each claim both individually and ‘as an ordered combination’…‘transform[s] the nature of the claim’ into a patent-eligible application” (Alice, US 2014). On the first question, the opinion explains that “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” (“[t]he specification does not describe a new telephone, a new server, or a new physical combination of the two”; e.g., not “an improvement to computer functionality” vs. e.g., “simply adding conventional computer components to well-known business practices” (Enfish, FC 2016); “the claims are not directed to a solution to a ‘technological problem’” (Diamond, US 1981) or “solve ‘a challenge particular to the Internet’” (DDR Holdings, FC 2014)). The FC panel also concluded that the claim elements did not “transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea” (“the components [i.e., the telephone, the server] must involve more than performance of ‘well-understood, routine, conventional activit[ies]’ previously known to the industry” and “behave exactly as expected according to their ordinary use” (Alice, US 2014). It was also noted that “the ‘295 patent fails to provide the requisite details necessary to carry out” “the abstract idea of classifying and storing digital images in an organized manner…in a telephone system” (“[s]teps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent eligibility’” Intell. Ventures, FC 2015).