Claims Directed to Encoding and Decoding Image Data Held Patent-Ineligible: RecogniCorp v. Nintendo
Adding one abstract idea (mathematical equation) to another abstract idea (encoding and decoding) does not render the claim non-abstract.
A claim directed to an abstract idea does not automatically become eligible merely by adding a mathematical formula.
RecogniCorp, the owner of U.S. Patent No. 8,005,303 (the “’303 patent”), appealed the district court’s ruling that RecogniCorp’s patent claims ineligible subject matter. The CAFC affirmed.
Subject Matter Eligibility: Under the first step of Alice, the Federal Circuit found that the representative claim at issue is directed to the abstract idea of encoding and decoding image data. It claims a method whereby a user displays images on a first display, assigns image codes to the images through an interface using a mathematical formula, and then reproduces the image based on the codes – standard encoding and decoding, an abstract concept long utilized to transmit information. Unlike in Diamond v. Diehr, the Federal Circuit found, “outside of the math,” the claim is not directed to otherwise eligible subject matter. The CAFC explained that “[a]dding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim nonabstract.” Applying step 2 of Alice, the Federal Circuit found nothing to transform the abstract idea of encoding and decoding into patent-eligible subject matter. It pointed out that a claim directed to an abstract idea does not automatically become eligible merely by adding a mathematical formula.