October 27, 2021

Volume XI, Number 300

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October 27, 2021

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Claims Directed to Encoding and Decoding Image Data Held Patent-Ineligible: RecogniCorp v. Nintendo

RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. April 28, 2017) (precedential).  On appeal from W. D. Wash. Before Lourie, Reyna, and Stoll.

Takeaway

  • 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.

Procedural Posture

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.

Synopsis

  • 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.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 129
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About this Author

Dragan Plavsic, Andrews Kurth, fuel cell systems lawyer, hybrid vehicles attorney
Associate

Dragan represents firm clients in patent litigation matters and in the Patent Trial and Appeal Board proceedings. In addition, he prepares and prosecutes patent applications and provides IP counseling to clients. The range of services that he provides further includes validity opinions, freedom to operate opinions and due diligence. Dragan provides his clients with services in a wide variety of technologies, including automotive safety systems, telematics systems, and fuel cell systems, hybrid vehicles, oil and gas exploration and production, oil and gas processing and...

202-662-2733
Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

212-908-6125
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