Enfish Mayo Step One Inquiry Fails to Save Claims Directed to Assigning Classification Data to Digital Images From Being Deemed an Abstract Idea

Takeaway: The Federal Circuit utilized the updated Mayo analysis set forth in the recent Enfish v. Microsoft decision to affirm a lower court’s ruling that the claims at issue were directed to patent-ineligible subject matter. In part, the Federal Circuit found the claimed subject matter was directed to the abstract idea of assigning “classification data” to digital images and that the claims merely recited generic components that did not provide an “inventive concept” that would transform the otherwise patent-ineligible abstract idea into a patent-eligible application of the concept. (TLI Communications LLC, v. AV Automotive, L.L.C., 2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421, May 17, 2016)

Details:
TLI Communications LLC, v. AV Automotive, L.L.C.
2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421
Decided: May 17, 2016

In a recent precedential decision, the Federal Circuit invalidated claims reciting an invention that assigns “classification data,” such as a date or a timestamp, to digital images as being directed to an abstract idea under 35 U.S.C. § 101 even in light of the updated Mayo step one inquiry as set forth in Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016). More specifically, the decision in Enfish clarified that the relevant inquiry at Mayo step one was “to ask whether the claims are directed to an improvement to computer functionality versus being directed an abstract idea. See Enfish slip op. at *11.

Claim 17, which is representative of the subject matter, recited:

A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

At Mayo step one (i.e., determining whether the claims at issue are directed to a patent-ineligible concept), the Federal Circuit found that the subject matter of claim 17 was drawn to the concept of classifying an image and storing the image based on its classification. The Federal Circuit noted that the claim required “concrete, tangible components such as 'a telephone unit' and a 'server.'“ However, the Federal Circuit went on to state 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” and that the specification's emphasis that the “present invention 'relates to a method for recording, communicating and administering [a] digital image' underscores that claim 17 is directed to an abstract concept.”

As mentioned above, the Federal Circuit utilized the recent clarification to Mayo step one set forth in Enfish to examine whether the claimed subject matter was directed to an improvement in computer functionality or whether the claimed subject matter was directed to an abstract idea. In supporting its conclusion that the claims were directed to an abstract idea, the Federal Circuit found that the claims were not directed to a specific improvement to computer functionality. Instead, the Federal Circuit found that the claims were directed to usage of conventional or generic technology in a well-known environment.

Of note, the Federal Circuit focused its discussion on the appellant's specification. For instance, the Federal Circuit states that the “specification does not describe a new telephone, a new server, or a new physical combination of the two” and that the “specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms.” The decision points to the description of the “telephone unit” in the specification as having “the standard features of a telephone unit” and that “cellular telephones may be utilized for image transmission.” Additionally, the decision points to the description of the server as being described “simply in terms of performing generic functions such as storing, receiving, and extracting data.”

In concluding its Mayo step one analysis, the Federal Circuit likened the claims at issue to the claims at issue in Content Extraction v. Wells Fargo Bank, which were directed to “collecting data,” “recognizing certain data within the collected data set,” and “storing the recognized data in memory.”

In its Mayo step two analysis (i.e., whether the claims at issue include an “inventive concept”), the Federal Circuit found that the claims failed to recite any “elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea.” Similar to its analysis set forth above with respect to Mayo step one, the Federal Circuit found that the claims at issue merely recited generic computer components “insufficient to add an inventive concept to an otherwise abstract idea” and that ”the recited physical components behave exactly as expected according to their ordinary use.”

As such, the Federal Circuit affirmed the lower court's decision that the claims at issue were directed to an abstract idea and, thus, invalid under 35 U.S.C. § 101.

My two cents: Again, this decision provides a lesson that the any specification should include as much technical detail as possible. For example, this Federal Circuit decision focused on the inadequacies of the specification (e.g., the specification described the system in purely functional terms, only describing the components in terms of performing generic functionality, etc.). Additionally, the Enfish decision notes that the specification in that case explained that the prior art database structures were inferior to the claimed invention. Thus, Applicants may consider including explanations of  why Applicant’s technology is superior to the prior art in the specification.