Less than four weeks after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank International, the Federal Circuit has used the holding of that case to strike down a patentee's claims under 35 U.S.C. § 101.

Digitech sued Electronics For Imaging and a host of co-defendants for allegedly infringing its U.S. Patent No. 6,128,415.  The '415 patent relates to "the generation and use of an improved device profile that describes spatial and color properties of a device within a digital image processing system."  By creating a number of such device profiles for input and output devices (e.g., digital camera, monitors, televisions, etc.), the patent purports to be able to more accurately translate color representations between these devices.

In July 2013, several defendants filed summary judgment motions, contending that Digitech's asserted claims were directed to patent-ineligible subject matter.  The presiding United States District Court for the Central District of California granted the motion.  Digitech appealed.

Digitech's claim 1 recites:

    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 de-pendent transformation of color information content of the image to a device independent color space; and
    second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

The Federal Circuit observed that claim 1 is "comprised of two sets of data that describe a device dependent transformation" and that "[t]he asserted claims are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system."

The Court invoked 1863's, Burr v. Duryee, for the notion that "[t]o qualify as a machine under section 101, the claimed invention must be a "concrete thing, consisting of parts, or of certain devices and combination of devices."  Claim 1 does not meet this standard because it recites an intangible arrangement of information, and therefore does not fall into any of the categories of § 101.

The Court further found that claim 1 was even broader than the patent-ineligible claims of In re Nuijten, where an applicant attempted to obtain patent protection on a signal.  Particularly, the claims of Nuijten required the physical, yet transitory, embodiment of a signal, whereas claim 1 required no physical embodiment at all.

As an aside, this is not the first time that the Federal Circuit has held that a data structure falls outside the ambit of § 101.  In re Warmerdam, decided in 1994, stands for the same principle.  However, In re Lowry, decided in the same year, suggests that claiming such a data structure as being incorporated in "a memory" would be enough for the claim to fall within the statutory category of article of manufacture.

Digitech's claim 10 recites:

    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 de-vice response characteristic functions; and
    combining said first and second data into the device profile.

The Court found that this claim merely "recites a process of taking two data sets and combining them into a single data set, the device profile."  As such, it was directed to an abstract idea.  Citing to Parker v. Flook (which has a new life after CLS Bank and Mayo Collaborative Services v. Prometheus Laboratories, Inc.), the Court stated that "[w]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible."  Despite the claim including reference to "a digital image reproduction system," there is no tie of the claimed method to a physical, tangible device.  Thus, the Court found the claim lacking any additional inventive features that would restrict its scope to less than that of the abstract idea itself.

Image processing a hot technology right now.  Look no further than your smartphone to see image processing innovation at work in the real world.  Does this case result in such innovations being unprotectable?  No, probably not.  Not unlike the claims in CLS Bank and Bilski v. Kappos, Digitech's claims encompass disembodied methods and structures.  While it is hard to fault the Federal Circuit for affirming the invalidity of the claims in the case, one has to wonder if the addition of a few well-placed hardware limitations to claims 1 and 10 would have resulted in a different outcome.

Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. (Fed. Cir. 2014)
Panel: Circuit Judges Moore, Reyna, and Hughes
Opinion by Circuit Judge Reyna