Adjusting the Standard for Patent Subject Matter Eligibility
The Federal Circuit Court of Appeal issued a decision last year Contour IP Holding LLC v. GoPro, Inc., 113 F.4th 1373 (Fed. Cir. 2024) (“GoPro”), which addressed subject matter eligibility standard for obtaining patent protection for inventions. The pivotal decision continues to reverberate and stir debate and discussion among academics and patent practitioners. This article discusses the decision, its implications and expected future impact.
The GoPro decision is remarkable in that it indicates a subtle but significant shift by the appeal court, which has plenary jurisdiction over all patent appeals, to focus, and at the same time relax, its interpretation of its own precedent regarding subject matter eligibility standard for obtaining patent protection.
By way of background, in order to meet eligibility requirements for patent protection, an invention must meet the three basic criteria of utility, novelty and non-obviousness. The utility requirement inquiry looks into practical application of the invention, filtering out and excluding abstract ideas and mere theories which are not sufficiently concrete or are missing any practical application, from patent protection. The novelty test asks whether the invention is new and did not exist before. Non-obviousness focuses on a comparison of the invention with what came before it (the prior art) and looks for meaningful differences between the two.
The patent eligibility subject matter is part of the utility requirement for patent protection, and was enacted in 1952 under 35 USC §101as part of the congressional revamping of the patent laws. According to that section, “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.”
In enacting Section 101, Congress codified a long line of Supreme Court precedents, dating back to the middle of 19th Century, which had held that abstract ideas, scientific formulae and laws of nature are not eligible for patent protection. The seminal Supreme Court decision Gottschalk v. Benson, 409 U.S. 63, 67 (1972) provides a review of that precedent, according to which such exclusions were necessary to preclude granting inventors overly broad patent rights, which could potentially include patent protection for areas and aspects, which are not disclosed or taught by the patent specification.
The legal origins of precluding abstract claims that seek to expand the scope of the patent beyond the realm of specific disclosure of the patent into the realm of mere possibilities goes back to the middle of the 19th century and the invention of telegraph by Morse. In O’Reilly v. Morse, 56 U.S. 62 (1850) the high Court addressed a challenge to the patentability of a certain claim of the Morse patent on the basis that it went beyond the scope disclosed or taught by the patent description. In particular, the Morse patent at issue included claims that were directed to a process for using electromagnetic signals to produce “distinguishable signs for telegraphy.” However, the subject patent also included a more expansive claim, which would have granted Morse exclusive rights to “use of electromagnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.” In denying eligibility for this claim, the Supreme Court explained that allowing patent protection for such a broad claim, which went beyond the specific disclosure and teachings contained in the patent, would potentially cover later inventions that employ techniques and processes not present in Morse’s patent. The decision noted that such to-be-invented methods and processes may “be less complicated—less liable to get out of order—less expensive in construction, and in its operation. But yet, if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee.” In the end, the decision denied the broader claim, while allowing the narrower ones.
Several decades later, when Alexander Graham Bell applied for patents for his Telephone inventions, the Supreme Court revisited subject matter patentability for obtaining patent protection in a similar challenge to the Bell patent, by reciting and elaborating its rejection of one of Morse’s patent claims and contrasting it with the claims present in Bell’s patent. In a series of decisions, which became known as “the Telephone Cases,” Dolbear v. American Bell Tel. Co. (1888) 126 U.S. 1, the Supreme Court noted that “the effect of that [Morse] decision was, therefore, that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could.” In contrast, the high Court noted, “Bell’s invention was the use of electric current to transmit vocal or other sounds. The claim was not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition, suited to the transmission of vocal and other sounds, and using it in that condition for that purpose.” “Bell’s claim, in other words, was not one for all telephonic use of electricity.”
In the modern era, the legal landscape for interpretation of subject matter eligibility under Section 101 is rooted in a Supreme Court decision in 2014. Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014) (“Alice”). Under what has since become known as the “Alice test,” courts must first examine such a claim to determine if it merely expresses an abstract idea. If the answer is negative, then the inquiry ends and the claim is subject matter eligible. On the other hand, a determination that the claim is directed to an ineligible subject matter triggers the second step of the Alice test, which inquires into whether there is enough structure, detail and specificity in the claim to make it patent eligible.
Returning to the case at hand, the invention in GoPro concerned a hands-free video camera that could be remotely controlled, a feature that was novel at the time of the filing of the patent application in 2010. As an example of its practical application in a sports setting, the subject patent described a video camera tethered to a skier’s helmet for the purpose of catching the path and view of the skier. Prior to the invention, such a video camera did not allow the skier to view what was being recorded, much less to control the skier’s recording preferences. The GoPro invention implemented a wireless technology that allowed the skier to make real time adjustments to the recording settings in addition to allowing for processing of the recordings and their real time playback.
The accused infringer in GoPro challenged the patent by bringing a summary judgment motion at the district court level, arguing that the patent claims were too general and abstract to meet Section 101 subject matter eligibility test. The district court agreed and granted the motion. On appeal, the Federal Circuit reversed. The GoPro appeal panel focused its subject matter eligibility inquiry on the improvements made by the invention over the prior art. Of consequence was the decision’s rejection of the lower court’s general, result oriented description of the invention, noting that describing any invention at a high level of generality frequently would result in a concept or idea and thus ineligibility of the subject patent.
GoPro signals a subtle but notable shift by the Federal Circuit in the direction that focuses Section 101 subject matter eligibility inquiry on whether there is sufficient specificity, structure and description in the claim and examines whether and how that claim is directed towards an improvement over the prior art.
Specifically, the appeal panel pointed out that the claimed invention in GoPro recited an improvement in the video camera technology existing at the time by requiring that the camera “processor be 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. With the claimed POV camera, a user can remotely view and adjust the desired recording in real time, with the elimination of bandwidth limitations on wireless data transfer.” The court thus concluded that with these specific steps and instructions, the invention is sufficiently specific as to the technological means, i.e., recording via parallel data stream followed by wireless transfer of the low-quality recording to a remote device, which, thus constitute an improvement over the existing technology of the time, to the real time viewing capabilities of a POV camera’s recordings on a remote device. Id.
GoPro decision is additionally notable and instructive as it departs from an earlier precedential decision of the appeal court in Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021) (Yu), which, as the decision itself noted, also involved claims directed to components of a digital camera. In Yu, the Federal Circuit court concluded that the claims were “directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.” The GoPro panel distinguished Yu on the basis that use of multiple pictures to enhance each other was known by photographers at the time of the Yu invention, whereas at the time of the invention in GoPro the patented technique was not known.
Conclusion:
As patent practitioners are well aware, the Supreme Court and Federal Circuit precedent over the past two decades have significantly tightened subject matter eligibility standards for patent claims, which, in turn has resulted in rejection of claims that are worded in a general, idea-oriented language. The GoPro decision is a significant step away from strict interpretation and application of Section 101 in favor of claims that meet certain criteria, including: 1) detailed description of the existing state of technology in the field of the invention and identifying its drawbacks; 2) full explanation of the advances and improvement the invention provides over the existing state of affairs; 3) include sufficient structure and detail in the claims to be narrowly tailored to the result they aim to achieve; and 4) finally avoid vague and unclear terms and phrases in the claims that could be subject to various and divergent interpretations.
Dariush Adli | President