RecogniCorp: Can Data Processing be Patented?

In RecogniCorp, LLC v. Nintendo Co., Ltd., petitioner-patentee RecogniCorp has asked the Supreme Court to take a fresh look at its eligibility doctrines with the following two questions presented:

  1. Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.
  2. Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

Although I previously panned the petition as unlikely to be granted, a set of amicus briefs supporting certiorari substantially raise the odds.

The court battle here began when RecogniCorp sued Nintendo for infringing its U.S. Patent No. 8,005,303.  Without any claim construction or considering any evidence, the district court dismissed the case on the pleadings (R.12(c))– finding that the claims lacked subject matter eligiblity. On appeal, the Federal Circuit affirmed (applying Alice):

  • Step 1: The claims are directed to the abstract idea of encoding and decoding image data long utilized to transmit information (“one if by land, two if by sea”).
  • Step 2: No further inventive concept.

 

Representative claim 1 is listed here:

1. A method for creating a composite image, comprising:

displaying facial feature images on a first area of a first display via a first device associated with the first display, wherein the facial feature images are associated with facial feature element codes;

selecting a facial feature image from the first area of the first display via a user interface associated with the first device, wherein the first device incorporates the selected facial feature image into a composite image on a second area of the first display, wherein the composite image is associated with a composite facial image code having at least a facial feature element code; and

reproducing the composite image on a second display based on the composite facial image code.

Challenging Alice at the Supreme Court?

 

55 thoughts on “RecogniCorp: Can Data Processing be Patented?

  1. Brief amici curiae of Twenty-Five Inventor Organizations (a “fundamental problem with the Federal Circuit’s Decision is that it capriciously declares that any process that starts with data, adds an algorithm, and ends with a new form of data must be abstract.”)

    Respectfully, Professor Crouch, you apparently fail to understand the arguments set forth in the brief. The first issue is whether a categorical rule having no basis in the doctrine of preemption may provide the foundation for a holding of patent ineligibility under 35 U.S.C. § 101. The second issue is the CAFC’s failure to address the claim limitations as an ordered combination.

    You know what is missing from your article and from the comment thread? A discussion of preemption. Very problematic.

    1. Preemption has been made into a non-item by the courts and their hand waving.

      Much like many things related to the nose of wax that is 35 USC 101.

  2. It is incomprehensible to me why anyone seriously interested in getting cert granted would put an admission like “even if those inventions involve or make use of abstract ideas” right in their first presented question?

    1. “involve or make use of” indicates that there is “something more” and that the claims are NOT just to to the abstract.

      Incomprehensible?

      You are not trying to comprehend then.

  3. I give the petitioners credit for tacking the question of eligibility of information processing patents. I admit I’m dull witted, but I don’t see the issue they claim needs answering. The question of patent ability of information processing has been answered – it’s not patentable by itself and sometimes not patentable when it’s an element in something else.

    Information cannot patented. It cannot be copyrighted. It can only be protected under trade secret with some exceptions.

    What about starting with old information and then determining new information based on the old information? Not patentable.

    What about starting with old information and then performing a series of steps and ending up with new information where the steps are new? Not patentable.

    What about starting with an old type of information, performing a series of steps, and ending up with new type of information where the steps are new and the type of information is useful? Not patentable.

    What about starting with old information, performing a series of steps, and ending up with new information that I specifically state in the claim could be used by a machine? Not patentable.

    What about doing something to get the old information, performing a series of steps, and ending up with new information. Not patentable, especially if the gathering step is simply recited as a characteristic of the information (e.g., measured information).

    What about starting with old information, performing a series of steps, ending up with new information, then configuring a machine to operate differently based on the new information. That may be patentable.

    What about starting with old information, performing a series of steps, ending up with new information, then configuring a machine to operate differently based on the new information and then operating the machine based on that new configuration. That’s patentable with a few exceptions.

    The current cases really aren’t about information processing. That’s not patentable. The current cases are about the machines.

    Bilski told us that if the machine is a risk hedging machine, then it doesn’t matter that the state of that machine is changed by a calculation, it’s not patentable.

    Alice told us that if the machine is an escrow service machine, then it doesn’t matter that the state of the machine is changed by a calculation, it’s not patentable.

    I don’t agree with some of these decisions, but the question about information processing per se has been answered.

      1. Anon, encryption of communications between devices certainly improves the communication between devices and thereby improves machines. One however should not be able to claim the mathematics in isolation. One could potentially infringe such a claim simply by thinking or duly on a paper or experimenting but not actually encrypting communications between machines.

        1. encryption does NOT require machines.

          Your view remains skewed.

          1. i actually see encryption as patentable because it’s a way of changing the character of data that hides information.

            Information is “it’s 30 degrees Celsius” “the chair costs $5” – that’s not patentable

            1. Great – and as I mentioned, patenting information is a strawman.

              (you do realize the company you entertain by delvign with such strawmen, right? )

            2. H2H, but if it is not tied to communications between machines, it is not within 101.

                1. Anon, of course it is.

                  Bilsky recited a process. In your opinion, where the claims in Bilsky eligible? If not, why not?

                2. Anon, of course it is.

                  No.

                  It is not.

                  And thus, your error is made evident.

                  (Bilski – amongst other Supreme Court 101 nonsense is merely an indicator that the score board is broken. Bilski may not have been patentable – but that distinguishes from being patent eligible.)

                3. Anon, to be clear here, you are saying that the Bilski claims are patent eligible?

                  You have to understand here that the Supreme Court was unanimous that they were not patent eligible, the Federal Circuit was all but unanimous that they were not patent eligible, and that virtually all amicus briefs argued that they were not patent eligible. The only disagreement among so many people and judges was as to the reason why they were not patent eligible.

                  But my question to you was twofold. If you believe the Bilski claims were patent eligible, why?

                  Why are they patent eligible?

              1. The thing is that information is 100% not statutory. It doesn’t just lack a category – Information. May. Not. Be. Patented.

                As information becomes relevant to inventions, the struggle has been how to balance. Because even if it can be attached to another category, a machine, a process… whatever, information still cannot be patented.

                Figuring out how the draw the lines is challenging (for me at least, certainly the courts). If it changes the state of machine than that might render it patentable.

                If changing the character of the information is what’s being patented (encryption) but the underlying information itself (“the Japanese are attacking Pearl Harbor” “Anon’s bank account number is 1234567890” “the price of a gallon of milk in Argentina on December 17th is $11”) is not patented, that might be okay. But that also appears to run into the Benson type situation where it has to be considered in light of other factors.

                1. Your strawman is showing (again).

                  Information – per se – is akin to the dialogue concerning the other type of IP protection of copyright.

                  Just as NO ONE talks about denying copyright protection to “information” (or facts or logic), no one advances any type of patent protection for information per se.

                  As to encryption – yet again (you really need to brush up on paying attention) – such does not require a machine. Sure, implementation of some forms MAY require a machine to make any such encryption feasible, and certainly, applications with machines are (often) desired, but that all rather misses the point.

    1. Information cannot patented. It cannot be copyrighted.

      Absolutely correct.

      But let’s get rid of those strawman, eh?

    2. What is claimed is:
      1. A method of reconstructing a digital image, the method comprising:
      receiving the digital image comprising a digital representation of an object bounded by a tetragon;
      dividing the digital image into a plurality of digital image segments;
      performing a segmentation analysis on the plurality of digital image segments;
      correcting curvature in the tetragon to form a quadrilateral based at least in part on the segmentation analysis;
      correcting projective effects in the quadrilateral to form a rectangle based at least in part on the segmentation analysis; and
      estimating an absolute size of the object based on intrinsic parameters of a capture device used to capture the digital image.

      US9208536B2

      link to patents.google.com

      1. Les, this is all data processing. It is not clear how this claim improves a machine or communications between machines.

        1. Yes, it is data processing…. Just pointing out the errors in 5.0

        2. But, on your point… it improves the machine adding to the functions provided by the machine. Before, the machine could not reconstruct digital images. Now it can.

          1. Les, but the claim has nothing to do with machines. It is simply a data process that can be done by hand, or in the mind.

    3. H2H, you get it.

      The ultimate object of the inquiry is to determine whether there is a new or improved machine, manufacture, composition or process. But the process is not simply information processing. It has to be directed to a new or improved machine, etc.

      1. has to be directed to a new or improved machine, etc.

        SO NOT 1952 (and what Congress actually stated therein).

    4. A motion picture is made of information and can be copyrighted.
      What about starting with old information, performing a series of steps, and ending up with new information that I specifically state in the claim could be used by a machine? Not patentable.

      What about starting with old information, performing a series of steps, ending up with new information, then configuring a machine to operate differently based on the new information. That may be patentable.

      So something magic happens when one configures? Also not sure about your use of the word patentable when you may mean eligible….

      1. the tangible work of authorship can be copyrighted, the information cannot be copyrighted. There is an old case about a phone book, I think.

        The line between information and a tangible work of authorship is perhaps drawn differently in copyright thank patents, but there is a line.

        1. the information cannot be copyrighted.

          Absolutely.

          Just like “math” cannot be copyrighted.
          Just like “logic” cannot be copyrighted.

          It is aspects of software that rise above “information,” rise above “math,” and rise above “logic” that set a very real difference (a difference that some on these boards absolutely refuse to be inte11ectually honest about).

  4. This patent is no more than “just do it on a computer”

    US2974426 from almost 60 years ago seems to cover it exactly, sans the computer.

    Should this patent fall under 101, 103, or 112?

    ALL OF THE ABOVE.

    1. This is true of 99.99% of “do it on a computer” claims once you get rid of the scrivening and linguistic b@ l0ney.

      The application of logic to information has been going on a long long time. What’s new is this farcical game of labeling the information and then pretending that the label imparts some magical “electronic structure”.

      The people who believe that are smoking pi gshirt. And their invariably just low-level grifters with the means to do something productive outside of the patent system. Sadly, their phenomenally outsized sense of entitlement blinds them. Without them the world will stop turning and we’ll become the Amish! So we were told so many times by serious people like “anon” and even lower forms of life that breed in the warm spaces around Big Jeans empty hotair bellowing pie hole.

    2. So, what you’re saying is that methods for aiding police sketch artists have been patentable for at least 60 years (not just since State Street). But if you improve the method by getting a computer to do it instead of having to store lug around a set of foils, because the improvement involves a computer, it magically becomes an abstract idea and is no longer patent eligible.

      Ya know, you can go back even further to find instances of secretaries taking dictation, i.e., converting speech to text. They even used pencil and paper in the process.

      That doesn’t make getting a machine to do it patent ineligible.

      l. A method of making identifications comprising the steps of: constructing reference points indicating the average relative locations of facial features from measurements of the relative locations of features in a plurality of different faces; changing the outline of specific corresponding features of said plurality of different faces to register with said reference points within an acceptable margin of error; reproducing each of said specific corresponding features on transparent foils as a medium therefor; assigning an individual code symbol to each of said transparent foils; and cataloging said foils, whereby overlaying of various foils of said features in accordance with a description of a persons face to be identified provides a composite facial expression bearing a likeness to said persons face, the successive designation of each code symbol on said various foils constituting an overall identifying code for said particular composite facial expression.

      1. Les none of the claims involve “improving the method by getting a computer to do it”.

        The computer is already fully capable of doing it, and the knowledge of how to do it with the computer is already well known to PHOSITA. So where is the improvement? Telling PHOSITA to do it?

        Are you suggesting that the improvement is found in the notion of using a computer to do it?

        In other words, to use a computer for the purpose for which the computer was designed should bring the first person to do so in each and every aspect a limited-time monopoly on doing so?

        That would be obviously insane.

        1. for which the computer was designed

          LOL – let me introduce you (once again) to my big box of Protons, Neutrons and Electrons which is “designed” to configure those three elementary particles.

          (and then – by your logic – we can go all Charles H. Duell and just close the patent office doors)

        2. First of all, I don’t know what “it” is in your list of questions.

          Second, if how to do it is known by “PHOSITA” that goes to a lack of novelty, not to abstractness or ineligibility.

          Third, if “it” is taking dictation, then the novelty is in the particular method used to get a computer to do it.

          “In other words, to use a computer for the purpose for which the computer was designed ”

          I don’t know what that means. Wilbur and Orville used lumber, cloth and rope each for the purpose for which they were designed. Structural support, harnessing the wind and applying tension. Does that mean the Wright Flyer was an abstract idea?

  5. Twenty-Five Inventor Organizations: a “fundamental problem with the Federal Circuit’s Decision is that it capriciously declares that any process that starts with data, adds an algorithm, and ends with a new form of data must be abstract

    How shocking that “twenty five inventors” would sign up to endorse a Big L I E. Shameless people.

    First, there’s nothing “capricious” about recognizing that a process that starts with data, adds an algorithm, and ends with a “new form of data” is, in many cases, an ineligible abstraction.

    But there is no CAFC decision I’m aware of stating what the “twenty five inventor organizations” are suggesting has been stated. For instance, the CAFC has never suggested that a process which recites a new machine where that new machine is described in objective structural terms that distinguish it from prior art machines is an “abstract” process just because the new machine processes data.

    This is an absolutely essential and critical point that can not be hand-waved away. It goes right to the heart of the issue … which is why these “inventor orgs” want desperately to wave it away.

    Pull the plug on logic and data processing patents. End the farce. Nobody will notice or care except for a tiny tiny handful of patent attorneys who aren’t qualified to do anything else.

    1. MM, the problem with the people drafting these briefs is that they fail to understand the ultimate objective of the inquiry – and that is to determine whether the claim is directed to a new or improved manufacture – were manufacture includes machines, manufactures, compositions and traditional processes (that pass the MOT). They conflate invention, which there can be with any new data processing technique, with requirements of the statute that only new or improved manufactures are patentable subject matter.

      Mathematical algorithm’s have not been patentable since Benson, particularly since Flook. Their complaint is not really with the Federal Circuit, but with the Statute of Monopolies that limited patentable subject matter to new manufactures.

      1. were manufacture includes machines, manufactures, compositions and traditional processes (that pass the MOT).

        Not only Congress says differently – even the Supreme Court shat on your views Ned.

        1. even the Supreme Court shat on your views Ned.

          Well, more accurately, they disapproved of the idea that the MoT was the only test for eligibility of claim. They did praise it as a wonderful guiding light, however.

          What did get coated righteously with nine gloriously dank shats was the concept that by reciting by “a computer” in your claim you could somehow sail through the 101 hoop.

          Some of that got on your face, “anon.” And it’s still there.

          LOLOLOLOLOLOLOLOL

          Take a shower, bro.

          1. Not test at all – try “clue.”

            And that was a comment geared to Ned who “hangs on their words,” so your reply to me rather misses the mark because I can recognize the shat they deliver and know the difference.

            1. Not test at all – try “clue.”

              You need to perform the test to obtain the clue.

              There is definitely a test. And the Supreme Court is crystal that it’s a good test to use, if you want a clue.

              But go ahead and remain clueless if you like. Just be sure to cash those checks before the client figures out that you’re a fraud.

              1. Test and clue are two very different things in the realm of what is known as the law.

                You seem rather confused by all of this legal stuff.

                1. Test and clue are two very different things

                  But intimately related, as I already pointed out.

                  In addition to being tiresome and pointless, your sophistry is transparent.

                  The fact remains — and it’s always going to remain — that a claim that recites (a) a new machine in objective structural terms that distinguish the machine from the prior art or that recites (b) a new step that results in an objective physical change to a material substance … is a claim that is far more likely to be eligible than not.

                  The recognition of the fact is hardly a disparagement of the test. And the Supremes understand this.

                  You don’t understand it. And we all know why.

                2. But intimately related, as I already pointed out.

                  LOL – your “pointing out” is mired in error and NOT recognizing the difference.

                  Do you really need you hand held on this point?

            2. your reply to me rather misses the mark

              More like a bullseye. It’s hard to miss a big juicy target at point blank range, my friend.

              1. No, you missed and missed badly.

                Maybe the term “broken scoreboard” should mean something to you.

      2. “They conflate invention, which there can be with any new data processing technique, with requirements of the statute that only new or improved manufactures are patentable subject matter.”

        Say what now?

        Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

        It’s the FIRST one!

  6. Another day, another 101 appeal to the Supreme Court.

  7. Who’s going to step up and defend this piece of shirt claim? You going to do it, Dennis? Someone please do it. I need the laughs.

    By the way, these questions presented for cert are bizarrely written.

    Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.

    “Even if”? What? What exactly is a “specific improvement”? Give us a break, people. Learn to write. Patent maximalists = worst attorneys ever. Always.

    Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

    Except that’s not the issue under so-called “step 2”. The issue under so-called “step 2” is whether there is “significantly more” in the claim to lift the abstraction out of the pit of ineligibility. For starters, a five year old can look at this claim and see that there isn’t anything remotely resembling “a new mathematical algorithm” in there. Second, the application of “math” and “logic” to information is an ineligible abstraction, period. Useful? Sure. But not eligible. You can’t claim these things in the abstract and they don’t (and shouldn’t) suddenly become eligible merely because some prior art context (e.g., “displaying facial features”) is recited.

    Someone comes up with some “math” to “reduce the memory” taken up by a legal brief “wherein the brief relates to eligibility of a claim, wherein the claim is associated with user codes”. Is that eligible? Because “reduce memory”? Give us all a break.

    Methods of applying logic and math to data do not belong in a sane patent system. They never did. They never will. They are ineligible.

    Just end the farce already. Pull the plug. The only people who will notice are those few patent attorneys out there with no other relevant skills.

    1. The question isn’t whether you can find a 102 argument against these claims (because you probably can) but whether there should be an assumption that processes are not patentable. It seems that these days any process that involves a computer is assumed not to be patentable.

      101 is supposed to be a coarse sieve. It’s become a horrible combination of novelty, random illogic, and comparisons to prior (incompatible decisions). Some clarification would be rather nice.

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