Under 35 U.S.C. § 101, patent claims may be challenged if they are found to be directed to patent ineligible subject matter, such as laws of nature, natural phenomena, products of nature or abstract ideas. On September 9, 2024, in Contour IP Holding LLC v. GoPro, Inc., the United States Court of Appeals for the Federal Circuit provided additional clarity with respect to the application of § 101. In particular, the Court reversed a lower court decision invalidating Contour IP Holdings’ claims as failing to meet § 101. The Court considered Contour’s claims to cover technological solutions that solved the problems of point-of-view (POV) cameras by allowing them to operate differently by recording multiple video streams in parallel, and thus were not abstract ideas under Alice step one.
The key takeaway from Contour is that patent drafters should clearly describe a specific technological problem in the specification and carefully craft claims that address that technological problem. By emphasizing a clear technological improvement, the patent can provide a strong foundation for satisfying the Alice test.
To summarize the Court’s rationale in Contour IP Holdings, it is important to first review the decade-long Alice standard. The Supreme Court of the United States set forth a two-step inquiry in Alice that determines patent eligibility under § 101. At Alice step one, a court should determine whether the claimed subject matter is directed to an abstract idea.[1] If the court concludes that the subject matter is directed to an abstract idea, the court continues to Alice step two and determines whether the claimed subject matter is directed to “significantly more” than the abstract idea. That is, whether the claims include elements sufficient to transform them into a patent-eligible application.[2]
Appellant Contour IP Holdings was granted U.S. Patent No. 8,890,954 B2 and U.S. Patent No. 8,896,694 B2 directed to POV cameras that generate two video streams—one of high quality and one of low quality.[3] GoPro challenged claim 11 of the ‘954 patent and claim 3 of the ‘694 patent as patent ineligible under 35 U.S.C. § 101.[4] The lower court ruled that the claims were related to an abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s setting remotely.[5]
The Federal Circuit disagreed and stated that at Alice step one, it is necessary to read claims as a whole to capture patent eligible subject matter, and if claims require “specific, technological means” that “in turn provide a technological improvement,” then this supports a finding of patent eligibility under § 101.[6] The Court further cautions that over-generalized, result-oriented claim construction could allow the patentability exception for abstract ideas to swallow 35 U.S.C. § 101.[7] The Court found the lower court erred by generalizing the claimed advance of the invention by describing it as simply “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely,” without accounting for the specific technical details in the claims. [8] The Court criticized this generalization, stating that it was at a high level of abstraction and failed to properly consider the claimed advance of the invention, which involved a specific method of generating video streams in parallel and transmitting the lower-quality stream to a remote device for real-time viewing and adjustments. [9] This error in articulating the claimed advance led to the improper conclusion that the claims were directed to an abstract idea, rather than a technological solution to a technical problem.
The Court conducted a detailed Alice step one analysis, examining the then-existing technical challenges and how the claimed invention addressed them, leading to a conclusion that the claims at issue are directed to a specific means that improves the relevant technology.[10] As described in the patents and accepted by the Court, without challenge from the opposing party, a POV camera mounted in a location where the user, such as a skier, cannot easily see the camera prevents the user from reviewing what is being recorded in real time. The claimed invention addresses this technical challenge by providing parallel data stream recording of both high and low data streams with the low-quality recording being wirelessly transmitted to a remote device, allowing the user to view and control the camera settings remotely while recording. [11] With the advancements made by Contour IP Holdings, the Court concluded that the claims describe more than wireless data transfer within a particular technological environment.[12] Particularly, the Court distinguished the subject matter from Yu v. Apple, Inc., which the lower court relied on, noting that, unlike the claims at issue, claims in Yu did not address any technological challenges, i.e., the idea of taking different pictures and using them to enhance one another was known by photographers for over a century.[13] Accordingly, the Court determined that the claims did recite patent eligible subject matter at Alice step one.[14] As such, there is no need to move to Alice step two.
We will be closely monitoring the development of this case and how this decision impacts areas of patent procurement and prosecution under 35 U.S.C. § 101. Reach out to your Dinsmore attorney for more information and to frame your IP strategies based on this snapshot win.
*Hannah Burnau is a law clerk and not yet licensed to practice law.
