Video Camera Patent Ruling Shows Proving Novelty Is Essential

Patent claims involving computer-implemented technologies are often challenged as ineligible subject matter under 35 USC Section 101. This section of the patent laws puts restrictions on what type of technology is eligible for patent protection, and the courts have interpreted this section as disqualifying “abstract ideas”—including some concepts in computer and software engineering.

This issue can arise when a software process is embedded in a device or system claim even though devices and systems are physical items and not abstract concepts. The US Court of Appeals for the Federal Circuit’s decision last month in Contour IP Holding v. GoPro sheds light on patent eligibility for software processes, particularly those involving data processing and transmission in video cameras.

The ruling has implications for how technology enterprises can go about protecting their intellectual property. In particular, patent applications directed to computer-implemented inventions that identify a novel, specific technological improvement are more likely to be granted valuable patent protection, and the resulting patents are more likely to withstand challenges to their validity when enforced in litigation.

Contour IP Holding LLC and GoPro Inc. have been embroiled in litigation over digital video camera patents for several years. In 2017, Contour initiated a patent infringement lawsuit against GoPro, which culminated in a 2022 ruling in the US District Court for the Northern District of California. The district court granted GoPro summary judgment, holding that the two claims in question were patent-ineligible under Section 101.

One of the claims, which was treated as representative of the patented invention, describes a portable digital video camera system comprising various components such as a lens, image sensor, wireless connection protocol device, and camera processor. The camera processor executes software processes, including generating two data streams (one higher-quality and one lower-quality) and sending the lower-quality stream to a portable device for real-time viewing.

Contour appealed the summary judgment, and the Federal Circuit conducted a de novo review on the issue of patent eligibility under Section 101.

The Alice Test

The US Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International established a two-step framework applicable to software-related inventions for determining patent eligibility under Section 101:

Step One. Are the claims directed to an abstract idea?

Step Two. If so, do the claims contain an “inventive concept” that transforms the abstract idea into a patent-eligible application?

In Contour, the district court determined 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.” The court then found that the claims merely recited functional language without any specific inventive concept or indication that the components were performing anything beyond their basic, generic tasks.

The district court concluded that processes such as generating, storing, and transmitting video are abstract concepts. Under its reasoning, the mere fact that two video streams are created didn’t render the claim less abstract.

Federal Circuit’s Ruling

On appeal, the Federal Circuit disagreed with the district court’s characterization of the claim as directed to an abstract idea. The Federal Circuit emphasized that, at Alice Step One, courts must focus on the specific advancement over the prior art and avoid describing claims at too high a level of abstraction.

The Federal Circuit examined whether the claims were directed to “a specific means or method that improves the relevant technology,” rather than just describing a result or abstract effect.

In this case, the court found that the claimed process—parallel data stream recording with the lower-quality stream wirelessly transmitted to a remote device—constituted a technological improvement. The claimed invention enabled real-time viewing of a point-of-view camera’s recordings on a separate device, something not addressed by prior technology.

Yu and ChargePoint

The Federal Circuit distinguished this case from two others involving digital technologies. In Yu v. Apple, the claims involved digital cameras but were deemed directed to the abstract idea of “taking two pictures and using one to enhance the other.” The court noted that this practice was a longstanding, fundamental concept in photography, making it an abstract idea.

Unlike Yu, the technology in Contour didn’t involve a longstanding practice. GoPro didn’t argue that transferring lower-quality video streams for real-time viewing was a well-known concept.

Similarly, in ChargePoint v. SemaConnect, the claims related to communication over a network in the context of electric vehicle charging stations. The court found no evidence of a technical improvement to the charging station itself.

By contrast, Contour involved a specific, technological method that improved the underlying technology by enabling real-time video display from a remote device.

Outlook

The Contour case underscores the importance of identifying whether a claim involves a specific technological improvement and whether that improvement is achieved through a novel technological means. A court’s initial characterization of the claim can be pivotal in determining patent eligibility under Section 101.

The distinction between Contour and Yu also highlights the significance of whether the claimed method represents a long-established practice in the field. In essence, the more novel and specific the technological improvement, the stronger the case for patent eligibility.

Technology enterprises are still in position to obtain valuable patent protection on computer-implemented inventions, but they should be prepared to clearly identify the new technological improvements yielded by their engineering teams when approaching the patent process.

The case is Contour IP Holding LLC v. GoPro, Inc., Fed. Cir., No. 22-01654, decided 9/9/24.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Frank L. Gerratana is a member in the patent practice at Mintz.

Mary Bao is an associate in the patent practice at Mintz.

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