February 26, 2015
By: Francis J. Ciaramella
Recently, in the case of Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), the Federal Circuit invalidated a patent on the basis that it was an attempt to patent illegible subject matter. Digitech was the owner of a patent, which directed the generation and use of a so-called “improved device profile” that describes spatial and color properties of a subject within a digital image processing system.
Digital image processing requires two items. First, that a source device (like a digital camera), take a picture or video of the subject. Second, this information is then sent to an output device (like a printer). According to Digitech’s patent, all digital source devices impose a level of distortion on the subject’s color and spatial properties because the source devices each individually allow for different ranges of colors and spatial information to be perceived. Essentially, a Canon brand camera may interpret a subject slightly differently than a Sony brand camera. Thus, the image produced is different (even if the specifications of the cameras are otherwise identical).
“Device dependent solutions” work to calibrate the color and spatial properties on the source devices (i.e., cameras) themselves. “Device independent solutions” work to translate an image’s pixel data from the original source device into a set format, which can then be distributed to any output device.
Digitech’s patent worked to capture color information, and create “device profiles” that describe color properties of both the source and output devices, thus allowing for more accurate translations of the subject’s pixel data into independent color.
Digitech filed infringement suits against 32 defendants. The defendants filed summary judgment motions alleging that the claims of the patent were ineligible subject matter. The district court granted these motions, citing that the information collected in these “device profiles” was intangible, and that the claims of the patent encompass an abstract idea not tied to a specific and tangible machine or apparatus.
In affirming the trial court, the Federal Circuit held that the “device profiles” assembled and claimed by Digitech’s patent were subject matter ineligible. Pursuant to section 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of mater, or any new and useful improvement thereof.” 35 U.S.C. § 101. The “device profiles” created by Digitech were not a tangible or physical thing, and thus were not eligible subject matter.
Even though the patent also had method claims that were based on an abstract idea, the patent was still invalid as to subject matter because the claims of the patent merely combined two data sets (i.e., color and spatial data) into a single data set to be used by output devices. Consequently, the “device profiles” are nothing more than a rearrangement of measured chromatic and spatial stimuli that is reassembled without a claimed physical or mechanical device (in fact, not such device was claimed in the patent).
Since, the “device profiles” functioned to merely capture sets of data describing color and space, and because the patent did not direct to any tangible embodiment of this information, the claims of the patent are directed to information in its non-tangible form and are thus not patentable.
The Federal Circuit points out quite succinctly, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
If you have any questions regarding patents, trademarks, and copyright law, including patentable subject matter, please feel free to contact us at the telephone number above.