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:
- 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.
- 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.
- Brief amici curiae of Adam Mossoff and David Lund (“The lower courts and the PTO have misunderstood the Mayo-Alice test and have created indeterminate and overly restrictive patent eligibility doctrine under Section 101.”)
- 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.”)
- Brief amicus curiae of Paul Cole (How do the statutory categories under 101 mesh with the eligibility requirements?)
- Brief amici curiae of Raymond Mercado (Federal Circuit is split on how to do this analysis)
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.