By Masahito Yokoyama & Scott Daniels
Last week the Court of Appeals for the Federal Circuit reversed a lower court judgment that patent claims for “a hands-free, point-of-view (POV) action sports video camera” were invalid as patent-ineligible. Contour IP Holding LLC V. Gopro, Inc., Docket No. 22-1654 (September 9, 2024). The CAFC explained that the claims are directed to a technological solution to a technological problem under Alice Step One and are therefore patent-eligible.
To determine whether patent claims recite patent ineligible subject matter, the Supreme Court has developed a two-step test commonly known as the “Alice” test. In Alice Step One, the courts consider whether the claims at issue recite an abstract idea. If not, the claims are patent-eligible. If the claims are directed to patent ineligible subject matter, the inquiry proceeds to Alice Step Two, in which the courts ask whether the claims recite something “significantly more” than the abstract idea, i.e., whether the claims include features “sufficient to transform them into a patent-eligible application.”
Background
POV (Point Of View) cameras are often “mounted in a location that does not permit the user to easily see the camera.” In such cases, the user cannot see what is being recorded in real. It is also difficult to adjust recording settings or a point of view to better match the user’s recording preferences. To address these problems, the patent discloses implementing wireless technology in the video camera that allows the camera to send real time information to a device, such as a cell phone, from which the user can see what is being recorded and make real time adjustments to the recording settings.
In addition to this wireless technology, the patent discloses modifications of “the camera’s system for processing recordings and permitting real time playback.” In a key embodiment, the patents disclose that camera is configured to generate video recordings “in two formats, high quality and low quality, in which the lower quality file is streamed” to the remote device.
A representative claim recites:
[a] portable, point of view digital video camera, comprising:
a lens;
an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene;
a wireless connection protocol device configured to send real time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and
a camera processor configured to:
receive the video image data directly or indirectly from the image sensor,
generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,
cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera, and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,
receive the control signals from the personal portable computing device, and
adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.
Federal Circuit’s Analysis
The Federal Circuit began its analysis by explaining that in Alice Step One, the courts often examine the “focus of the claimed advance over the prior art.” This examination is done by ascertaining the “basic character” of the claimed subject matter. But the courts must avoid describing the claims “at a high level of abstraction, divorced from the claim language itself.”
To determine the “focus” of the claimed advance in Alice Step One, the courts look to whether the claims are directed to “a specific means or method that improves the relevant technology,” and not simply be to “a result or effect that itself is the abstract idea.” An improved result alone does not support patent eligibility at Alice Step One. When a claim “abstractly cover[s] results” without regard to a specific process or machinery for achieving those results, it may improperly “prohibit all other persons from making the same thing by any means whatsoever” (emphasis added).
In this case, the claim (read as a whole) recites a specific means for improving the technology, i.e., an improved POV camera with a POV camera processor “configured to record low- and high-quality data streams in parallel, followed by the low-quality data stream’s wireless transfer to a remote device.” A user may “remotely view and adjust the desired recording in real time, eliminating bandwidth limitations on wireless data transfer. The claims thus require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.”
The CAFC adopted the lower court’s interpretation of the claim term “generate” to mean recording multiple video streams “in parallel.” Accordingly, the claim does not cover other ways by which a camera processor might generate multiple video streams of varying quality for wireless transmission, for example streams created in sequence—the claims recite a “specific means or method that improves the relevant technology.”
The CAFC then scolded the lower court for characterizing the claim “at an impermissibly high level of generality.” This improper practice all but ensures that claims will be found to recite patent-ineligible abstract subject matter. Here, the lower court claim interpretation “disregards the disclosed technological means for obtaining a technological result.”
The accused infringer argued to the CAFC that the claims “simply employ known or conventional components that existed in the prior art at the time of the invention.” The CAFC disagreed, stating that even if this were true, it does not follow that the claim necessarily recites an abstract idea at Step One.
Federal Circuit’s Conclusion
The CAFC concluded that the claim describes more than wireless data transfer within a particular technological environment. In fact, it allows the claimed POV camera to “operate differently than it otherwise could,” since it (i) records multiple video streams in parallel and (ii) wirelessly transfers only one video stream, a lower quality stream, to a remote device.
The CAFC concludes that the claim recites “a technological solution to a technological problem.” The written description discloses improving POV camera technology through “specific means of generating high- and low-quality video streams in parallel and transferring a low-quality video stream to a remote device,” an improvement recited in the claims. The claims therefore recite patent eligible subject matter for purposes of Alice Step One.
Takeaways
Patent applicants should use the specification to explain the technical problems in the relevant art and how their invention addresses those problems with a technical solution. Applicant’s claims must clearly recite concrete technical aspect, and not merely the functional aspect, of that solution. Dependent claims may be a good place to ensure that the technical solution is recited.
