by Dennis Crouch
In Contour IP v. GoPro, the Federal Circuit has reversed a Judge Orrick (N.D.Cal.) summary judgment of ineligibility. The case here should be one for patent drafters to consider — particularly thinking about how to incorporate specific technological improvements into their patent claims and specification (while still maintaining broad claim coverage). Of course, the patentee here has the benefit of actual hardware beyond mere processing.
Contour owns two patents related to POV video cameras. These patents claim a camera system having lenses, sensors, etc., that generates two video streams of different quality in parallel, wirelessly transmitting the lower-quality stream to a remote device for real-time viewing and control on your phone. The higher-quality stream is stored on the camera for later use.
- Contour IP Holding LLC v. GoPro, Inc., No. 2022-1654 (Fed. Cir. Sept. 9, 2024).
- U.S. Patent Nos. 8,890,954 and 8,896,694.
One crazy aspect of this case is the parties have been fighting over these patents 2015, when Contour initially sued GoPro for patent infringement. The district litigation was on pause for several years as Contour successfully defended the patents in inter partes review proceedings. The PTAB twice sided with the patentee. In its first final written decision, the PTAB excluded a GoPro catalog, finding it was not prior art. Mark Lemley successfully appealed that decision. However, on remand the PTAB again sided with the patentee — holding that the GoPro catalog did not add enough to change the outcome.
GoPro did not initially raise an eligibility challenge, waiting until (1) it started losing on infringement and nonobviousness; and (2) the Federal Circuit decided Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021). Yu was important be cause similarly involved a camera system with multiple lenses and image sensors. Despite the hardware, the the court still concluded that the claims were directed to the abstract idea of taking two pictures and using one to enhance the other. Relying heavily on Yu, the district court sided with GoPro and found the claim invalid as directed to an abstract idea.
Federal Circuit’s Analysis: In an opinion by Judge Reyna, the appellate panel reversed the district court’s decision, finding the claims patent-eligible under Alice step one, which asks whether the claim is directed to an abstract idea.
Focus on the Claimed Advance: The court emphasized the importance of examining the “focus of the claimed advance over the prior art” at Alice step one. This approach is obviously tricky because the advance is not always clear. The court here suggested that it should ascertain the “basic character” of the claimed subject matter while being cautious to avoid resting on an overly abstract descriptions divorced from the claim language. See, Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016). In this approach, the court is typically looking for specific technological improvement rather than claiming improved results.
In looking at the claims here, the court concluded that claim 11 is directed to a specific technological improvement. Here, the court particularly highlighted three improvements: (1) a camera configured to record low and high-quality data streams in parallel; (2) the low-quality data stream’s wireless transfer to a remote device; and (3) consequently overcoming the major technological hurdle of real-time viewing in a POV camera. According to the panel, these elements, taken together, provide “a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.” At oral arguments, Contour’s counsel John Keville (Sheppard Mullin) argued exactly this:
What was not in existence before was generating in parallel from the same video image data two image streams of different quality and then taking only the low resolution stream and sending that one wirelessly to the handheld device.
Close Call – Saved by Claim Construction: The claim requires that the camera “generate” data streams. That claim limitation appears results oriented and not technologically tied. However, the district court construed the claim to particularly require recording multiple video streams in parallel. This construction was crucial in distinguishing the claims from prior art methods that might create streams in sequence, and also provides a more particularized technological improvement. This was a lucky outcome for the patentee — it was somewhat happenstance that the district court had already construed the claims (for an infringement analysis). Often we are seeing 101 decisions without substantive claim construction. In many ways, this is a case that shows why that can be so important.
Conventional Components: Addressing GoPro’s argument that the claims employ known or conventional components, the court clarified that this factor alone does not necessarily render a claim directed to an abstract idea at Alice step one. An invention can be patentable even if it simply a novel rearrangement of new components.
Back to Yu. In this parallel precedent, the Federal Circuit had concluded that Yu’s approach of taking two photos and using one to enhance the other was a longstanding practice in photography — “known by photographers for over a century.” In this case, GoPro (apparently) did not argue that the parallel recording and wireless transfer of video streams for real-time viewing was a similarly long-known or fundamental practice.
In thinking about how to use this case — as a prosecutor I would not want to rely heavily on the claim strategy since they only survived on appeal. Still, the important way to think of this is adding meat to your processor-functions — making sure those functions are not simply claiming a result, but rather are claiming technical steps that lead to a meaningful technological result.
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John Keville of Sheppard Mullin argued for patentee-appellant, joined on the brief by Michael Krill of Sheppard and Richard Stanley of his own firm. John Keville also represented the patentee in the IPR, but at the time he was with Winston & Strawn.
Sean Pak of Quinn Emanuel argued for defendant-appellee GoPro, joined on the brief by William Adams, Nathan Hamstra, and Marc Kaplan from the same firm.
The patents were originally prosecuted by folks at Knobbe, including Lincoln Essig.
Case was PROST, SCHALL, and REYNA, Circuit Judges, with Judge Reyna authoring the decision.