Northern District Of California Holds Claims Invalid, Finding Them Not Directed To A Patent-Eligible Category, And Moreover Directed To An Abstract Idea
On September 10, 2020, the United States District Court for the Northern District of California granted a motion to dismiss allegations of patent infringement pursuant to 35 U.S.C. § 101. FullView, Inc. v. Polycom, Inc., No. 18-CV-00510-EMC, 2020 WL 5430309 (N.D. Cal. Sept. 10, 2020). The district court found that the at-issue claims were ineligible for two reasons. First, the claims were not directed to a patent-eligible category under Section 101. Second, the claims were directed to the abstract idea of combining multiple pictures to create one larger picture without offering an inventive concept, as required under the two-step test in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
On July 2, 2020, FullView filed the instant complaint. Polycom moved to dismiss the claims pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing that the claims were directed to patent-ineligible subject matter under Section 101. Under Section 101, “[w]hoever 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[.]” 35 U.S.C. § 101.
The claims at issue had previously been found not unpatentable by the Patent Trial and Appeal Board in an inter partes review of whether the claims were obvious.
First, Polycom argued that the claims, which claimed a “composite image,” did not fit into any of the statutory categories for patent eligibility pursuant to Section 101. FullView opposed by relying on a dictionary definition of the word “image,” arguing that the claimed “composite image” can be produced on a photographic material or on an electronic display, and as such is both tangible and a manufacture under Section 101. The district court disagreed, finding that dictionary definitions of the word “image” encompass intangible embodiments, such as transitory mental images and data. As such, the court concluded that the claims were broad enough to cover intangible images—such as mental images or optical counterparts of an object produced by a lens, mirror, or electronic device, like a reflection—and therefore patent ineligible.
Second, Polycom argued that the claims were directed to an abstract idea without offering an inventive concept as required by the two-step Alice test.
As to the first step of Alice, the district court found that the technology taught by the patent-at-issue combines one picture with another picture to form a larger picture. The court held that is an abstract idea because of historical photographic techniques of combining multiple images to enhance images. In reaching this conclusion, the district court compared the claims-at-issue with claims held invalid under Section 101 in RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017) and Yanbin Yu v. Apple Inc., 392 F. Supp. 3d 1096 (N.D. Cal. 2019).
The district court then analyzed the second step of Alice by looking for an inventive concept that is separate and apart from the abstract idea of merging images. Again, relying on Yanbin, the district court held that “after eliminating the abstract idea of a composite image, the [claims] describe sensors, reflective areas, mirrors, etc., that are well-known and generic.” FullView, 2020 WL 5430309, at *8. As such, the court concluded that the claims were directed “to the abstract idea of creating composite images with geometry, which is not an inventive concept as a matter of law.” Id., at *9.
However, the district court dismissed the complaint “without prejudice to the extent FullView can amend its pleading in a way that is not inconsistent with this order.” Id. This suggests that—at least as to the “abstract idea” holding—FullView may replead its claim to create a factual issue as to whether an inventive concept exists, thereby avoiding a finding of ineligibility at the motion to dismiss stage under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), and reflects a reluctance by district courts to invalidate patents on a motion to dismiss.