On September 9, the Court of Appeals for the Federal Circuit reversed a finding by the District Court for the Northern District of California that point-of-view camera claims were ineligible.[1] While this decision did not break new ground on eligibility, it reinforces how patent drafters and owners must cast their claims to demonstrate an improvement to the relevant technology to prove eligibility in step one of the Alice framework.
Plaintiff-appellant Contour sued GoPro on its point-of-view camera patents in 2015 and 2021. The claimed cameras at issue were not merely cameras that a skier can wear to show the view descending a slope but specifically claimed distinct image streams having distinct qualities. The claimed camera processor receives video image data then generates first and second image data streams. As claimed, the “second image data stream [has] a higher quality than the first image data stream” and is sent “directly to [a] personal portable computing device” of the user that “generates the control signals for the video camera.” This is consequential because, to record great videos, users must have some sense of what they are recording. But wireless links between point-of-view cameras and smartphones that can control such cameras have limited bandwidth that may not be able to support the high-definition video they capture.[2]
Contour offered a solution to this problem with its claimed “first image data stream,” which is collected at a resolution appropriate for wireless streaming to a user’s smartphone to allow the user to observe the field of view and exercise control of the separate point-of-view camera based on what the camera sees.
The district court did not find these advances sufficient for eligibility. At Alice step one, the district court concluded that the claims were directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.”[3] The subsequent step two analysis doomed eligibility by concluding that the claim provided “no indication that the physical components are behaving in any way other than their basic, generic tasks.”[4]
The Federal Circuit reversed on closer inspection of the claim language. The court specifically noted the significance of the district court’s construction determining that the claimed aspects that “generate . . . a first . . . and a second image data stream” should be interpreted as “record[ing] in parallel from the video image data.” Parallel recording is distinct from sequential generation, where the low-resolution stream is “down-converted” from the originally recorded high-resolution stream.[5] Taken as such, the representative claim did not recite an abstract idea implemented on devices performing their expected functions but an eligible improvement to the relevant technology. Parallel data stream recording with lower-quality recording wirelessly transferred to a remote device constituted a “specific, technological means” for achieving the invention’s results, one the district court erroneously disregarded.[6]
In addressing GoPro’s other arguments on appeal, the court confirmed that a claim’s recitation of known or conventional components by itself does not mean that the claims are directed to an abstract idea at step one. The court also found that the claimed subject matter, particularly as construed, was not a “longstanding, fundamental practice in photography” or “simply directed to the abstract idea of wireless network communication.”[7]
Concluding at step one that the claims are “directed to a technological solution to a technological problem,” the court reversed and remanded the district court’s judgment against Contour without analyzing step two.
Given the decade-long woes of software innovators wrought by the uncertainty of Alice, this case further cements the importance of telling the innovation story. While inventors and businesses rightfully wish to tout the superior results of their innovation, it is critical for patentees to frame the technological problem and link the claimed technological solution to that problem. To better bolster patent claims for eligibility, Applicants must invest time in framing and linking these complementary concepts during drafting, patent practitioners must ensure they express these concepts in the claims during prosecution, and patentees must strategize how to put that connection forward during claim construction and other phases of disputes.
[1] Contour IP Holding LLC v. GoPro, Inc., No. 2022-1654, 2022-1691 (Fed. Cir. Sept. 9, 2024).
[2] Id., slip op. at 2–3.
[3] Contour IP Holding, LLC v. GoPro, Inc., No. 3:17-cv-04738-WHO, 2022 WL 658553, at *4 (N.D. Cal. Mar. 4, 2022).
[4] Id., at *7.
[5] Contour IP Holding LLC v. GoPro, Inc., No. 2022-1654, 2022-1691, slip op. at 5–6.
[6] Id. at 10–11.
[7] Id. at 11–12.
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