RecogniCorp owns the ’303 patent, which provides a method and apparatus for building a composite facial image using constituent parts. Prior to the ’303 patent, composite facial images were typically stored in file formats such as “bitmap,” “gif,” or “jpeg.” These formats required significant memory and compressing the images often resulted in decreased quality. Digital transmission of these images could be difficult. The ’303 patent solved this problem by encoding the image for transmission using a variety of image classes that require less memory and bandwidth and decoding the images upon receipt.
Under Alice step one, the Federal Circuit considered whether the claims are directed to ineligible subject matter, such as an abstract idea. This inquiry often concerns whether the claims are directed to “a specific means or method” for improving technology or whether they are directed merely to an abstract end-result. If the claims are not directed to an abstract idea, the inquiry ends. Here, the Court found that claim 1 of the ’303 patent is directed to the abstract idea of encoding and decoding image data. The patent claims a method whereby a user displays images on a first display, assigns image codes to the images through an interface using a mathematical formula, and reproduces the image based on the codes. This uses standard encoding and decoding, which is an abstract concept, long utilized to transmit information.
RecogniCorp invoked Diamond v. Diehr to support its argument that claiming the use of a mathematical formula does not necessarily render a patent ineligible. In Diehr, the Supreme Court held that despite a method claim’s recitation of a mathematical formula, “a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.” However, the Supreme Court focused not on the presence of a mathematical formula, but on the subject matter of the claims as a whole. Diehr was distinguished from this case because, outside of the math, claim 1 of the ’303 patent is not directed to otherwise eligible subject matter. The Court held that adding one abstract idea (certain mathematical steps) to another abstract idea (encoding and decoding) does not render the claim non-abstract.
RecogniCorp further argued that, as in Enfish, “the district court mischaracterized the invention using an improperly high level of abstraction that ignored the particular encoding process recited by the claims.” But the Court found that the claims of the ’303 patent are clearly directed to encoding and decoding image data. The Court stated that unlike Enfish, claim 1 does not claim a software method that improves the functioning of a computer. Instead, it claims a “process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Comparing this case to Digitech Image Technologies v. Electronics for Imaging, it concluded that the ’303 patent claims a method whereby a user starts with data, codes that data using “at least one multiplication operation,” and ends with a new form of data.
The Court then moved to Alice step two. Under this step, the Court searches for an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” To save a patent at step two, an inventive concept must be evident in the claims. RecogniCorp argued that the combination of claim elements, i.e., the “particular encoding process using the specific algorithm disclosed” in the patent “transforms” the abstract idea into a patentable invention. The Court rejected this argument, finding no inventive concept. It explained that in DDR Holdings v. Hotels.com, the Court found that the patent claims satisfied Alice step two because “the claimed solution amounts to an inventive concept for resolving