The Software IP Report
Claims Directed to a Data Structure Are Not Patent-Eligible, Says Federal Circuit
By Charles Bieneman
Categories: Patent Eligibility, Software Patents, The Software IP Report
In its first patent-eligibility case since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l., the Federal Circuit has held that claims directed to a data structure are not patent-eligible, affirming the district court’s summary judgment of invalidity. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. (Fed. Cir. July 11, 2014). Thus, all claims of U.S. Patent No. 6,128,415 “directed to a device profile and a method for creating a device profile within a digital image processing system . . . were invalid under 35 U.S.C. § 101.”
The ‘415 patent was directed to an “improved device profile” to provide for a better translation of “an image’s pixel data from a device dependent format into an independent color space, which can then be translated to any number of output devices at a reduced level of distortion.” Thus, the ‘415 patent taught and claimed a device profile including “both spatial properties and color properties of an imaging device.”
Two independent claims of the ‘415 patent recited simply “a device profile.” However, the Court found that “the device profile described in the ’415 patent is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter.” That is, the claims were simply directed to data and
encompass all embodiments of the information contained in the device profile, regardless of the process through which this information is obtained or the physical medium in which it is stored. Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.
The ‘415 patent’s method claims, directed to “a method of generating a device profile,” fared no better. The claims recited an “abstract process” of gathering two data sets and combining them into a single data set. This process did not “require input from a physical device.” Although the patent owner argued otherwise, apart from a non-limiting preamble, “nothing in the claim language expressly ties the method to an image processor.”
Editorial comment: At first blush the claims here seem related to image processing, and thus likely non-abstract and patent-eligible. Nonetheless, I think the present result is unsurprising, and would have been reached even before the Alice Corp. decision. These claims really were directed to abstract, intangible data structures, and nothing more. As a patent examiner years ago when almost any software was thought to be patent-elgible, I remember that there was nonetheless a clear rule that data structures by themselves could not be patentable. So at a minimum, the claims directed to a “device profile” were suspect even when issued. And it now seems well-settled that parallel method claims cannot be saved when “system” claims are patent-ineligible, and vice-versa. It would have been very difficult for the Federal Circuit to uphold the validity of the claims in this case.