District Court Granted Summary Judgment Of Invalidity Because The Patent Recited A Patent-Ineligible Abstract Idea Executed In A Generic Digital Video Camera

• Published date: 22 March 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Author: Mr C. Brandon Rash and M. Andrew Holtman

Judge Orrick in the Northern District of California recently granted a motion for summary judgment of invalidity for patent-ineligible subject matter under 35 U.S.C. ' 101. The court found that the claims recited the abstract idea of creating and transmitting video at two different resolutions and adjusting the video's setting remotely.

Contour IP Holdings, LLC v. GoPro, Inc., No. 3:17-cv-4738-WHO (N.D. Cal.).

Plaintiff Contour IP Holdings, LLC sued GoPro for infringing U.S. Patent Nos. 8,890,954 and 8,896,694. The patents are directed to point-of-view digital video cameras. A representative claim recites such a camera'generally comprising four elements: a lens; an image sensor configured to capture light propagating through the lens and produce video image data; a wireless connection protocol device configured to send image content to a portable computing device; and a camera processor configured to receive the video image data from the sensor'generates first and second image streams, receives control signals from the computing device and adjusts settings of the video camera based on the control signals.

The court analyzed eligibility using the Supreme Court's two-step Alice framework. In step one, a court determines whether the claims are 'directed to' a patent-ineligible concept, such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two and considers 'the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application.' Id.

Addressing step one, the court cited Federal Circuit precedent stating that claims reciting a mechanical device, such as a camera, may nonetheless be directed to an abstract concept, and instructing that the analysis focuses on 'what the patent asserted to be the focus of the claimed advance over the prior art.' TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020). The proffered advance over the prior art was that the device creates two video streams, one lower and one higher resolution, and transmits the lower resolution stream to a portable computing device while saving the higher resolution stream. A further stated advance is that the camera is configured to receive control signals from the computing device, which can adjust its settings.

The court found that this proffered advance is 'directed to a result or effect...