Digitech Image Technologies LLC et al v. Pentax Ricoh Imaging Co Ltd et al

Filing 36

ORDER GRANTING MOTION FOR SUMMARY JUDGMENT 31 by Judge Otis D. Wright, II. (lc). Modified on 7/31/2013.(lc).

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O 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 12 DIGITECH IMAGE TECHNOLOGIES, LLC, v. 13 14 15 Plaintiff, Case No. 8:12-cv-1689-ODW(MRWx) ORDER GRANTING MOTION FOR SUMMARY JUDGMENT [31] PENTAX RICOH IMAGING CO, LTD. et al., Defendants. 16 I. 17 INTRODUCTION 18 Under 35 U.S.C. § 101, patent claims must be directed to one of the four patent- 19 eligible subject-matter categories: processes, machines, manufactures, or compositions 20 of matter. Inventions that fit within one or more of the statutory categories are 21 nonetheless patent ineligible if they are coextensive with laws of nature, natural 22 phenomenon, or abstract ideas, unless the inventions include substantive limitations 23 that would add “significantly more” to the underlying principles. Mayo Collaborative 24 Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012). 25 Plaintiff Digitech Image Technologies LLC’s ’415 Patent claims a device 26 profile and a method of generating a device profile.1 A device profile describes the 27 28 1 U.S. Patent No. 6,128,415, claims 1–6, 9, 10–15, and 26–31. 1 color and spatial properties of a device so that a processed image can be more 2 accurately captured, transformed, or rendered, minimizing color and spatial distortions 3 produced by an imaging device. (’415 Patent 1:8–11; 1:32–34.) Although past 4 attempts to correct these image distortions are not new, they have been device 5 dependent. 6 processing through use of device-independent device profiles by applying a device- 7 independent paradigm for the spatial characterization. (Id. at 1:64–2:1; 2:4–9.) (Id. at 1:35–36.) The ’415 Patent seeks to improve digital-imaging 8 Defendants assert that these claims either fall outside the four subject-matter 9 categories or merely describe an ineligible abstract idea.2 For the reasons discussed 10 below, the Court finds that the asserted claims are patent ineligible and GRANTS 11 Defendants’ Motion for Summary Judgment of Invalidity.3 (ECF No. 31.) II. 12 LEGAL STANDARD 13 Summary judgment should be granted if there are no genuine issues of material 14 fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. 15 P. 56(c). The moving party bears the initial burden of establishing the absence of a 16 genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986). 17 Once the moving party has met its burden, the nonmoving party must go beyond the 18 pleadings and identify specific facts through admissible evidence that show a genuine 19 issue for trial. Id.; Fed. R. Civ. P. 56(c). Conclusory or speculative testimony in 20 affidavits and moving papers is insufficient to raise genuine issues of fact and defeat 21 summary judgment. Thornhill’s Publ’g Co. v. GTE Corp., 594 F.2d 730, 738 (9th 22 Cir. 1979). 23 24 25 26 27 28 2 Defendants FUJIFILM Corp.; Sigma Corp.; Sigma Corp. of America; Pentax Ricoh Imaging Co., Ltd.; Pentax Ricoh Imaging Americas Corp.; Ricoh Company, Ltd.; Ricoh Americas Corp.; and Konica Minolta Business Solutions, U.S.A., Inc. bring this Motion for Summary Judgment. The Court enters this order in each of the separate cases as well as in the lead case: 8:12-cv-1324ODW(MRWx); 8:12-cv-1679-ODW(MRWx); 8:12-cv-1681-ODW(MRWx); 8:12-cv-1689ODW(MRWx); 8:12-cv-1694-ODW(MRWx). 3 Having considered the papers filed in support of and in opposition to this Motion, the Court deems the matter appropriate for decision without oral argument. Fed. R. Civ. P. 78; L.R. 7–15. 2 1 A genuine issue of material fact must be more than a scintilla of evidence, or 2 evidence that is merely colorable or not significantly probative. Addisu v. Fred 3 Meyer, 198 F.3d 1130, 1134 (9th Cir. 2000). A disputed fact is “material” where the 4 resolution of that fact might affect the outcome of the suit under the governing law. 5 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1968). An issue is “genuine” if 6 the evidence is sufficient for a reasonable jury to return a verdict for the nonmoving 7 party. Id. Where the moving and nonmoving parties’ versions of events differ, courts 8 are required to view the facts and draw reasonable inferences in the light most 9 favorable to the nonmoving party. Scott v. Harris, 550 U.S. 372, 378 (2007). 10 III. DISCUSSION 11 “Anything under the sun” may be considered an invention, but only those 12 satisfying the conditions under § 101 are patentable. Bilski v. Kappos, 130 S. Ct. 13 3218, 3249 (2010). Determinations of patent eligibility are questions of law and 14 require a two-step analysis. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 15 1366, 1369 (Fed. Cir. 2011); Bilski, 130 S. Ct. at 3225. First, the claimed invention 16 must fall within one of the four eligible subject-matter categories: processes, 17 machines, manufactures, or compositions of matter. Bilski, 130 S. Ct. at 3225; 35 18 U.S.C. § 101. Second, if the claimed invention falls within one of the four categories, 19 it still must not wholly embrace one of the three judicially recognized exceptions: 20 laws of nature, physical phenomena, and abstract ideas. Bilski, 130 S. Ct. at 3225. 21 All inventions, at some level, “embody, use, reflect, rest upon, or apply laws of 22 nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. So applying 23 the judicially recognized exceptions too broadly would “eviscerate patent law.” Id. 24 And though a practical application of an abstract idea to a structure or process may be 25 patented, “one must do more than simply state the [abstract idea] while adding the 26 words ‘apply it.’” Id. at 1294. Thus, the goal of § 101 is to guard against the 27 “wholesale preemption of fundamental principles,” while looking beyond mere claim- 28 drafting strategies such as “highly stylized language, hollow field-of-use limitations, 3 1 or the recitation of token post-solution activity.” CLS Bank Int’l v. Alice Corp., 2 No. 2011-1301, 2013 U.S. App. LEXIS 9493, at *28, 30 (Fed. Cir. May 10, 2013) (en 3 banc) (Lourie, J., concurring). 4 The Supreme Court has eschewed the Federal Circuit’s formulas for patent 5 eligibility like the machine-or-transformation test and has directed courts to employ a 6 “flexible, claim-by-claim approach to subject-matter eligibility that avoids rigid line 7 drawings.” Id. at *30–31. And as with all invalidity inquiries, a § 101 eligibility 8 determination presupposes that a patent is entitled to a presumption of validity. 9 Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2252 (2011); 35 U.S.C. § 282. 10 Hence, a court must carefully consider “meaningful limitations” that prevent a claim 11 from covering every practical application of a fundamental concept and preserve the 12 claim’s validity. CLS Bank, 2013 U.S. App. LEXIS 9493, at *29. 13 Although the parties do not contend that claim construction is necessary nor 14 assert any particular constructions, the Court is obligated to first consider this issue. 15 State St. Bank & Trust. Co. v. Signature Fin. Grp., 149 F.3d 1368, 1370 (Fed. Cir. 16 1998) (explaining that the issue of § 101 patent eligibility is “a matter of both claim 17 construction and statutory construction”). The only term needing construction in this 18 § 101 analysis is the term “device profile,” found in every asserted claim. 19 A. Claim construction Claim construction is a question of law to be decided by the court. Markman v. 20 21 Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). 22 construing claim terms, the Court must begin with an examination of the claim 23 language itself. August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 24 2011); see also Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 25 (Fed. Cir. 1998) (“The claims define the scope of the right to exclude; the claim 26 construction inquiry, therefore, begins and ends in all cases with the actual words of 27 the claim.”). 28 /// 4 In 1 The terms used in the claims are generally given their “ordinary and customary 2 meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en 3 banc). This “ordinary and customary meaning” is the meaning as understood by a 4 person of ordinary skill in the art in question at the time of the invention. Phillips, 5 415 F.3d at 1313. A patentee is presumed to have intended the ordinary meaning of a 6 claim term in the absence of an express intent to the contrary. Id. In some instances, 7 a term’s ordinary meaning may be readily apparent, in which case the court need only 8 apply the widely accepted meaning of commonly understood words. Acumed LLC v. 9 Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007). 10 The person of ordinary skill in the art is deemed to read the claim term in the 11 context of the entire patent. Phillips, 415 F.3d at 1313. Thus, claim terms are 12 interpreted in light of the intrinsic evidence of record, including the specification, 13 written description, drawings, and prosecution history. Teleflex, Inc. v. Ficosa N. Am. 14 Corp., 299 F.3d 1313, 1324–25 (Fed. Cir. 2002). 15 Courts may also rely on extrinsic evidence, such as expert testimony, 16 dictionaries, and learned treatises, to better understand the underlying technology and 17 to determine what a person of ordinary skill in the art would understand the claim 18 terms to mean. Phillips, 415 F.3d at 1317–18. But while extrinsic evidence can be 19 useful, it is less reliable and less significant than the intrinsic record in determining the 20 meaning of claim language. Id. at 1318. Particularly, expert testimony should be 21 discounted if it is “clearly at odds with the claim construction mandated by the 22 claims” or are merely conclusory, unsupported assertions. Id. 23 The ’415 Patent describes a digital-image processing system comprising a 24 source (image-acquisition) device, an image processor, and an output device. (’415 25 Patent 2:49–63.) Color-characteristic and spatial-characteristic information relating to 26 the source and output devices is passed to the image processor along with image data, 27 allowing the processor to more accurately capture, transform, or render an image. 28 (’415 Patent 2:49–3:11.) This is represented in the following diagram: 5 1 2 3 4 5 6 (’415 Patent, Fig. 1.) The specification refers to a tagged file structure as a device profile. 7 8 (’415 Patent 1:66–67.) This device profile can include a “characterization of a 9 device’s image pixel data in device independent color space” as well as “spatial 10 characteristics” of the device. (’415 Patent 1:64–2:3.) It is clear that these 11 characteristics are just numerical data, whether raw or calculated. (’415 Patent 1:55– 12 64 (color characteristics can be represented by “image pixel data (digits) in a device 13 independent color space—e.g. CIE L*a*b* or CIE XYZ”); ’415 Patent 3:12–31 14 (spatial characteristics can be represented by mathematical functions describing 15 “added noise and image signal transform characteristics” or “a gray level dependent 16 additive noise”).) The Court finds no reason to construe the term “device profile” to mean 17 18 anything other than its plain and ordinary meaning. 19 appropriate are tagged file structure,4 data set, or paradigm—but these do no better job 20 at describing “device profile” than its plain and ordinary meaning. What is certain, 21 4 22 23 24 25 26 27 28 Synonyms that may be Digitech contends that a device profile can exist as “a ‘tag’ appended to a digital image obtained using a digital image processing system,” and is therefore a tangible object. (Opp’n 8.) There are two problems with this statement. First, the specification points out that the characterization of a device “is commonly codified in a tagged file structure, referred to as a device profile, that accompanies the digital imaging device.” Thus, it is the imaging device that has this device profile or tag; the tag is not part of a digital image. (’415 Patent 1:64–2:1.) Second, while a tag may exist as an appendage of a digital image, it is not a tangible object. A case may be made that data describing a digital image should be considered tangible. See In re Abele, 684 F.2d 902, 908–09 (C.C.P.A. 1982) (holding that electronic transformation of data into a visual depiction of body tissues satisfied the transformation test for patent eligibility). But data describing a device profile is many shades less tangible—not only does it not represent anything tangible, it only represents intangible properties of a device. 6 1 and most relevant in this § 101 analysis, is that the meaning of “device profile” does 2 not connote being a physical object, comprising a physical component, or having a 3 physical manifestation. See In re Ferguson, 558 F.3d 1359, 1365–66 (Fed. Cir. 2009) 4 (“Paradigm claims do not recite a concrete thing, consisting of parts, or of certain 5 devices and combination of devices.” (internal quotation marks omitted)). 6 Turning to the asserted claims, these can be divided into two categories of 7 claims: ones for a device profile (claims 1–6, 9, and 26–31); and ones for a method of 8 generating a device profile (claims 10–15). The Court first addresses the device- 9 profile claims, and then proceeds to analyze the remaining claims. 10 11 The device-profile claims (claims 1–6, 9, and 26–31) do not fall within any of the four statutory categories for patent eligibility 12 Claims 1 and 26 are the two independent claims of the ’415 Patent directed to a 13 14 15 16 17 18 19 20 B. device profile: 1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising: first data for describing a device dependent transformation of color information content of the image to a device independent color space; and second data for describing a device dependent transformation of spatial information content of the image in said device independent color space. 25 26. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions. 26 (’415 Patent 5:33–41; 7:8–15.) Section 101 demands that the claimed invention be a 27 process, machine, manufacture, or composition of matter. Bilski, 130 S. Ct. at 3225. 28 Claims 1 and 26 are none of these. 21 22 23 24 7 1 Claim 1 describes a device profile. This profile comprises a first piece of data 2 relating to color information, and a second piece of data relating to spatial 3 information. Nothing in claim 1 describes anything tangible. 4 To qualify as a machine under § 101, it must be a “concrete thing.” In re 5 Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). Intangible things such as “a transitory 6 signal made of . . . electromagnetic variances . . . [may be] physical and real, [but] it 7 does not possess concrete structure in the sense implied” under § 101. Id. A device 8 profile is nothing more than an intangible set of data—it is nothing more than 9 numbers. See In re Warmerdam, 33 F.3d 1354, 1362–63 (Fed. Cir. 1994) (holding 10 that a “data structure” relating to a hierarchy of bubbles was patent ineligible because 11 it only referred to the manipulation of ineligible, purely mathematical ideas). 12 Similarly, a manufacture must be tangible. A manufacture refers to articles 13 resulting from processing materials to give these materials new forms, qualities, 14 properties, or combinations. Id. at 1356. Notably, the term “manufacture” as used in 15 the statute is a noun. Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1373 (Fed. 16 Cir. 2003). So, “manufacture” does not refer to the making or modifying of data, 17 signals, or other intangible objects. See Nuijten, 500 F.3d at 1356–57. A device 18 profile is just data, something intangible and not considered a manufacture. And the 19 fact that a device profile is made of a color component and a spatial component does 20 not qualify it as a manufacture—a combination of intangible objects does not create a 21 tangible one. 22 Further, a device profile is not a composition of matter. A composition of 23 matter is defined as “all compositions of two or more substances and . . . all composite 24 articles, whether they be the results of chemical union, or of mechanical mixture, or 25 whether they be gases, fluids, powders or solids.” Diamond v. Chakrabarty, 447 U.S. 26 303, 308 (1980) (internal quotation marks omitted). Digitech contends that a device 27 profile is a composition of matter but fails to explain how that is so. (Opp’n 19.) The 28 key word in this category is “matter”—meaning that the claimed object must be 8 1 tangible. A device profile, however composed of different bits of data, cannot 2 constitute matter. 3 Finally, a device profile is not a process. A process requires action; it is “an act, 4 or a series of acts, performed upon the subject-matter to be transformed and reduced 5 to a different state or thing.” Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (internal 6 quotation marks omitted). Digitech does not argue that a device profile is a process, 7 and the Court sees no reason how it could be. Thus, failing to fall within one of the 8 four patent-eligible subject-matter categories, claim 1 is invalid under § 101. 9 In the same way, the device profile in claim 26 fails to fall within one of the 10 four statutory categories. Claim 26 differs from claim 1 in that it only includes 11 claim 1’s “second data” for describing a device-dependent transformation of spatial- 12 information content of a image to a device-independent color space. (’415 Patent 7:8– 13 13.) Claim 26 also adds an additional limitation over claim 1 by defining that the data 14 is represented by spatial-characteristic functions through the “use of spatial stimuli 15 and device response” for the device. (’415 Patent 7:13–15.) But though claim 26 16 recites verbs “use” and “is represented,” this claim is not a process claim; it is a 17 product-by-process claim, “in which the product is defined at least in part in terms of 18 the method or process by which it is made.” SmithKline Beecham Corp. v. Apotex 19 Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (internal quotation marks omitted). 20 Product-by-process claims are directed to the ultimate product, and not the underlying 21 process. Nuijten, 500 F.3d at 1355. Therefore, claim 26’s additional limitation is 22 insufficient to propel the claim into one of the four statutory categories and the claim 23 must be found invalid. 24 For the same reasons, dependent claims 2–6, 9, and 27–31 cannot rectify the 25 patent-ineligibility problem of their independent claims 1 and 26. These dependent 26 claims only add limitations and make them at most, product-by-process claims. These 27 additional limitations cannot transmute intangible device profiles into patent-eligible 28 subject matter. It follows that these dependent claims must also be found invalid. 9 2 The device-profile method claims (claims 10–15) do not describe a patenteligible process because they fail the machine-or-transformation test 3 Unlike claims 1 and 26, claim 10 is a method claim. Claim 10 describes a 1 4 5 6 7 8 9 10 11 12 13 14 C. method of generating device profiles that closely mirrors claim 1: 10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising: generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions; generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and combining said first and second data into the device profile. (’415 Patent 6:1–16.) 15 The parties dispute whether claim 10 falls within the process category of § 101. 16 One important and useful tool to determine whether an invention is a patent-eligible 17 process is the machine-or-transformation test. Bilski, 130 S. Ct. at 3227. Though it is 18 not the sole test for patent eligibility, it has been historically true that inventions 19 failing the machine-or-transformation test were rarely granted patents. Id. Under this 20 test, a claimed process could be patent-eligible only if “(1) it is tied to a particular 21 machine or apparatus; or (2) it transforms a particular article into a different state or 22 thing.” CyberSource, 654 F.3d at 1369. But passing this test is no guarantee for 23 patentability; not everything that produces a “useful, concrete, and tangible result” is 24 patentable. Bilski, 130 S. Ct. at 3259 (Breyer, J., concurring). 25 Claim 10 fails the machine prong of this test because it recites no particular 26 machine or apparatus. It is conceivable that this claimed process could be performed 27 by a specialized processor or a general-purpose computer because claim 10 prescribes 28 three separate steps to generate a device profile from preexisting data: (1) generating 10 1 first data relating to color information through measured chromatic stimuli and device 2 response characteristic functions; (2) generating second data relating to spatial 3 information through spatial stimuli and device response characteristic functions; and 4 (3) combining the first and second data into a device profile. But even if it is assumed 5 that a processor or computing device plays a central role in this claim, it appears such 6 a device would only be employed for repetitive calculations, and would not “impose 7 meaningful limits on the claim’s scope.” 8 Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 9 1278 (Fed. Cir. 2012) (holding that a computer used to manage a stable-value- 10 protected life-insurance policy does not impose meaningful limits on the scope of the 11 claims). Though the “generating” computations may be time-consuming, they are 12 straightforward transfer functions that could be done by pencil-and-paper if the source 13 data is not too complex. Thus, because claim 10 is not tethered to a machine or 14 apparatus (either explicitly or implicitly), claim 10 cannot satisfy the machine prong 15 of the test. CyberSource, 654 F.3d at 1369; see 16 This claimed process fairs no better under the transformation prong. To satisfy 17 this prong, a claimed process must “transform an article into a different state or 18 being.” In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc). There is no doubt 19 that this process involves the manipulation of data; some of the mathematical 20 relationships behind these manipulations are provided in the patent specification. 21 (’415 Patent 3:47–4:9, 4:42–64.) But the “mere manipulation or reorganization of 22 data . . . does not satisfy the transformation prong.” CyberSource, 654 F.3d at 1375. 23 Here, only data is transformed—and it is transformed into different data through 24 mathematical relationships. And though these mathematical relationships may be 25 complex and the data manipulations computationally exhaustive, this does not satisfy 26 the transformation prong. 27 intangible device properties into intangible data describing those properties. This 28 transformation differs from ones that result in an intangible representation of a The process of claim 10 mathematically transforms 11 1 physical object. See In re Bilski, 545 F.3d at 962 (clarifying that in Abele, the 2 “electronic transformation of the data itself into a visual depiction” of body tissues 3 was sufficient to satisfy the transformation prong. In re Abele, 684 F.2d at 908–09). 4 Accordingly, claim 10 fails the transformation prong. 5 D. 6 The device-profile method claims (claims 10–15) are otherwise patent ineligible because they merely describe an abstract idea 7 Even if claim 10 is deemed a process, the parties differ whether claim 10 8 merely describes an abstract idea, and is therefore ineligible for patenting. Bilski, 130 9 S. Ct. at 3225. A meaningful exercise is to first identify the abstract idea. CLS Bank, 10 2013 U.S. App. LEXIS 9493, at *33. Here, the abstract idea is the generation of a 11 device profile through mathematical correlations. This was admitted to the Patent 12 Office during prosecution of the patent: 13 14 15 16 17 [W]ith regards to the present invention, to enable optimization, the Applicants developed something referred to as a ‘profile’ which contains an abstract description of the spatial response properties of any device in question (i.e., input device, display device, or output device; noise response and sharpness response). (Yen Decl., Ex. B, at 120 (emphasis added).) 18 While an application of an abstract idea, such as a mathematical formula, to a 19 known structure may qualify for patent protection, “to transform an unpatentable 20 [abstract idea] into a patent-eligible application of such a law, one must do more than 21 simply state the [abstract idea] while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 22 1293–94. Several cases illustrate the § 101 tension between patent-eligible subject 23 matter and an unpatentable abstract idea. 24 First, in Benson, the Supreme Court considered a computer-implemented 25 method for converting binary-coded decimal (BCD) numerals into pure binary 26 numerals. Gottschalk v. Benson, 409 U.S. 63, 64 (1972). After identifying the 27 algorithm behind the conversion, the Court concluded that the claims were “so 28 abstract and sweeping as to cover both known and unknown uses of the BCD to pure 12 1 binary conversion,” and would therefore preclude every application of the algorithm. 2 Id. at 68. 3 Then, in Flook, the Supreme Court evaluated the patent eligibility of a 4 computerized method for updating alarm limits for a continuously monitored 5 industrial process. Parker v. Flook, 437 U.S. 584, 585–86 (1978). This method 6 involved measuring the present value of a process variable, using the disclosed 7 mathematical formula to calculate a new alarm limit in view of the present value, and 8 adjusting the previous alarm limit to the newly calculated limit. Id. at 586–87. The 9 Court concluded that although the claim did not “wholly preempt” the mathematical 10 formula, the claimed process was ineligible for patenting because it was an abstract 11 idea that failed to contain sufficient substance beyond the formula itself. Id. at 589, 12 594. 13 These two cases can be contrasted with Diehr, where the Supreme Court held 14 claims drawn to a process for curing synthetic rubber, using a mathematical formula, 15 to be patent eligible. Diamond v. Diehr, 450 U.S. 175, 177 (1981). Although the 16 claimed process incorporated a mathematical formula known as the Arrhenius 17 equation, the process called for substantive steps aside from the equation, such as a 18 step to constantly measure the actual temperature inside the rubber mold. Id. at 178– 19 79, 187. This was deemed to be a specific application instead of an abstract idea in 20 isolation, because the patentees “only [sought] to foreclose from others the use of that 21 equation in conjunction with all of the other steps in their claimed process,” and not 22 total preemption of the equation. Id. at 187. 23 But claim 10 is nothing more than an abstract idea—it employs algorithms that 24 manipulate collected data. This is not enough: “if a claim is directed essentially to a 25 method of calculating, using a mathematical formula, even if the solution is for a 26 specific purpose, the claimed method is nonstatutory.” 27 (quoting In re Richman, 563 F.2d 1026, 1030 (C.C.P.A. 1977)). 28 structureless claim preempts the entire field of device-independent characterization 13 Flook, 437 U.S. at 595 This broad, 1 paradigms for digital-image processing and cannot be said to be patent-eligible subject 2 matter. 3 Digitech argues three points in its attempt to show that claim 10 has structural 4 limitations, even though they don’t appear in the claim language: first, claim 10 5 requires an input device such as a camera (Opp’n 23); second, claim 10’s required 6 measurements must be done with specialized electronic equipment such as a 7 microdensitometer (id. at 23–24); third, the required calculations need a processor 8 because they are nonlinear and must be done in an extremely short amount of time (id. 9 at 24). These creative arguments ring hollow. 10 The Court discounts the first two arguments because claim 10 clearly recites no 11 such structural elements, and claim 10 is written in such a way as to not require any 12 structural elements. The claimed process manipulates incoming color and spatial data, 13 regardless where the data comes from or how the data is captured. And as for 14 Digitech’s contention that the claimed process requires a processor because the math 15 is impossible for humans, this argument has been foreclosed by the Federal Circuit: 16 “[S]imply appending generic computer functionality to lend speed or efficiency to the 17 performance of an otherwise abstract concept does not meaningfully limit claim scope 18 for purposes of patent eligibility.” CLS Bank, 2013 U.S. App. LEXIS 9493, at *29 19 (citing Bancorp, 687 F.3d at 1278, and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 20 1333–34 (Fed. Cir. 2012) (finding that the claimed computer-aided clearinghouse 21 process is a patent-ineligible abstract idea)); SiRF Tech., Inc. v. Int’l Trade Comm’n, 22 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to 23 impose a meaningful limit on the scope of a claim, it must play a significant part in 24 permitting the claimed method to be performed, rather than function solely as an 25 obvious mechanism for permitting a solution to be achieved more quickly, i.e., 26 through the utilization of a computer for performing calculations.”). 27 Finally, like claims 1 and 26’s dependent claims discussed above, dependent 28 claims 11–15 only limit the type of algorithms that may be employed, such as Wiener 14 1 noise power spectra and gray-level dependent noise masks. (’415 Patent 6:21–32.) 2 These dependent claims do not add any meaningful limitations—they are just trivial 3 ones as explained in the specification: In practice these image signal transform characteristics are represented by mid-tone Wiener Noise Spectra and small signal Modulation Transfer Functions measured in the mid-tone domain. In a second form, the characteristic processing section 30 contains spatial characteristic functions describing a gray level dependent additive noise in the source device. The latter form is directed towards the method(s) described in U.S. [P]atent [A]pplication Ser. No. 08/440,639 filed May 15, 1995 for noise reduction using a Wiener variant filter in a pyramid image representation. 4 5 6 7 8 9 10 11 (’415 Patent 3:14–27.) Thus, these dependent claims cannot salvage an unpatentable 12 principle and transform it into a patentable process. Mayo, 132 S. Ct. 1289 at 1302; 13 Bilski, 130 S. Ct. at 3230 (“[T]he prohibition against patenting abstract ideas ‘cannot 14 be circumvented by attempting to limit the use of the formula to a particular 15 technological environment’ or adding ‘insignificant postsolution activity.’” (quoting 16 Diehr, 450 U.S. at 191–92)). 17 E. 18 Digitech mischaracterizes its patent claims as ones directed to a digitalimage processing system 19 Throughout its Opposition, Digitech asserts that the claimed invention is a 20 digital-image processing system, either in part or in whole. (Opp’n 6–7, 12–13, 19, 21 22–23, 24–25.) Though this may be the claimed invention in unasserted claims 18– 22 25, this is not the claimed invention for the asserted claims. The asserted claims recite 23 no structure—it is this deficiency that makes the claims broad and unpatentable. 24 Having found the asserted claims invalid, the Court declines to opine whether 25 the remaining, unasserted claims are patent ineligible. The Court also recognizes that 26 there may be patentable subject matter disclosed in the ’415 Patent, and claims may be 27 drafted (or have been drafted in a related patent) that fully satisfy § 101’s eligibility 28 requirements. But this is not the issue here. The asserted claims as drafted in the ’415 15 1 Patent are intangible, possess no meaningful non-abstract limitations, and are 2 therefore ineligible for patent protection under § 101. 3 F. Digitech’s alleged issues of material fact fail to defeat summary judgment 4 As a last-ditch effort, Digitech asserts that summary judgment is inappropriate 5 because there are outstanding genuine issues of material fact, and filed a separate 6 Statement of Genuine Disputes of Material Fact. (Opp’n 2–3; ECF No. 73-6.) Not 7 only does Digitech fail to adequately explain what these disputed facts are and how 8 they relate to this § 101 analysis, but most of Digitech’s identified issues are not 9 questions of fact—they are questions of law. The remainder of the alleged questions 10 of fact (e.g., whether the claims could be “practiced on a piece of paper” (Statement of 11 Genuine Disputes of Material Fact ¶ 24)) are insignificantly probative to a collateral 12 issue or are entirely irrelevant to this § 101 analysis. As a matter of fact, Digitech’s 13 concern is misplaced; determinations of patent eligibility are questions of law. 14 CyberSource, 654 F.3d at 1369. IV. 15 CONCLUSION 16 As discussed, the Court finds claims 1–6, 9, 10–15, and 26–31 of the ’415 17 Patent invalid under § 101 because they are directed towards patent-ineligible subject 18 matter. Accordingly, Defendants’ Motion for Summary Judgment is GRANTED. 19 IT IS SO ORDERED. 20 July 31, 2013 21 22 23 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 24 25 26 27 28 16

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