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Federal Circuit Affirms District Court Of Delaware’s Rule 12(b)(6) Dismissal Holding Asserted Claims Unpatentable Under 35 U.S.C. § 101.
04/09/2024On April 4, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the U.S. District Court for the District of Delaware’s decision finding asserted claims invalid under 35 U.S.C. § 101. In October 2021, AI Visualize, Inc. accused Nuance Communications, Inc. and Mach7 Technologies, Inc. of infringing certain claims of U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. The asserted patents share substantially the same specification and are directed to the visualization of medical scans.
According to the asserted patents, medical imaging systems, such as MRI scans, typically create a collection of 2D-cross-sectional images of a patient’s body or organ. These images are usually stored together at a centralized server as a 3D collection of data representing the scanned area. The collection is referred to as a “volume visualization dataset” or “VVD.” The inventors of the asserted patents recognized challenges with the technology. Reviewing a 3D view using these large VVDs required a powerful computer or a dedicated server, and the 2D scans needed to be directly available to that computer or server via a high-speed communication link. The asserted patents describe systems and methods for users to review 3D “virtual views” of a VVD on a computer connected to the internet without said technical limitations.
The asserted claims can be sorted into three groups. The claims in “group 1” involve systems wherein a web application determines which frames of a virtual view are stored locally, directs the server to only transmit the missing frames, compiles the locally-stored and newly-received frames to create the desired virtual view; and displays the virtual view. The claims in “group 2” further require that the web application assigns a “unique identifiable key” to a virtual view that has been previously requested by the user, compares the current user request for a virtual view to any previous user requests, and determines whether any image frames with a corresponding unique identifiable key are already locally stored. Unlike the claims in groups 1 and 2, the claims in “group 3” require all the frames to be transmitted from the server to the user’s computer. The server initially transmits lower-quality versions of the frames for immediate viewing, followed by higher quality versions.
In granting defendants’ Rule 12(b)(6) motion to dismiss, the district court concluded that the asserted claims are directed to the abstract idea of “retrieving user-requested, remotely stored information.” The district court further concluded that none of the claim limitations transform the claims into a patent-eligible application of an abstract idea.
The CAFC agreed with the district court that, at Alice step one, the asserted claims are directed to an abstract idea. The claims in groups 1 and 2 recite a system that includes the functionally oriented steps of: storing data (VVD) on a server, accepting user requests to view a portion of that data (virtual views), checking for the location of all data needed for the virtual view, creating image frames from any non-locally-stored virtual view data, transmitting all non-locally-stored image frames to the user, compiling all image frames, and displaying the image frames to the users. Similarly, the claims in group 3 recite transmitting two versions of all frames: initial, low-quality versions, followed by higher quality versions. The CAFC held that all of the asserted claims are directed to converting data and using computers to collect, manipulate, and display the data.
AI Visualize argued that the claims are not directed to an abstract idea because the claims require the creation of “on the fly” virtual views at a client computer. The patent owner pointed to several passages in the specification to support its view that creation of virtual views provides a technical solution to a technical problem. Specifically, AI Visualize cited a passage that discloses dynamic and static virtual views and describes how related image frames are selected from a VVD. But the CAFC refused to rely on these details from the specification because these details are not claimed. None of the claims include a recitation about how to create frames or virtual views, much less in a manner that would meaningfully support a technical solution to a technical problem in the prior art.
At Alice step two, the CAFC found that the claim elements individually, and as an ordered combination, involve nothing more than the abstract idea itself or conventional computer functions or components. The CAFC rejected AI Visualize’s argument that the creation of virtual views sufficiently transforms the claims into patent-eligible subject matter because the intrinsic record discloses that virtual views were known in the art.
