Dinsmore & Shohl LLP
Under 35 U.S.C. SS 101 allows patent claims to be challenged if it is determined that they are directed at patent-ineligible subject matter such as laws of Nature, natural phenomena, products or abstract ideas. In Contour IP Holding, LLC v. GoPro, Inc., on September 9, 2024, the United States Court of Appeals Federal Circuit clarified the application of SS 101. The Court reversed a decision by a lower court that invalidated Contour IP Holdings claims for failing to meet SS 101. The Court found that Contour’s claims covered technological solutions that allowed point-of-view cameras to operate differently, by recording multiple video stream in parallel. These were not abstract ideas as defined by Alice step one. By focusing on a clear technological advancement, a patent can be a good foundation for meeting the Alice test. The Supreme Court of the United States established a two-step process in Alice to determine patent eligibility under SS 101. The court will first determine whether the claimed topic is directed towards an abstract concept. That is, whether the claims include elements sufficient to transform them into a patent-eligible application.
Appellant Contour IP Holdings was granted U.S. Patent No. U.S. patent No. GoPro challenged claims 11 and 3 of the ’954 patents as patent ineligible. The lower court ruled the claims were abstract and related to “creating and sending video (at different resolutions) and adjusting video’s settings remotely.” The Federal Circuit disagreed, stating that Alice step one requires that claims be read as a unit to capture patent-eligible subject matter. If claims require “specific technological means” which “in turn provide a technology improvement,” this supports a patent eligibility finding under SS 1001.
. The Court cautioned that an The Court found that the lower court erred in generalizing the claimed advancement of the invention, describing it simply as “creating and sending video (at different resolutions) and adjusting video’s settings remote,” without accounting for specific technical details. This error in articulating the claimed advance led to the incorrect conclusion that the claims were directed to an abstract idea, rather than a technological solution to a technical problem. The Court performed a detailed Alice Step One analysis, examining then-existing technological challenges and how claimed invention addressed them. This led to a conclusion the claims are directed to a particular means that improves relevant technology. The claimed invention addresses the technical challenge by providing simultaneous data stream recording for both high-quality and low-quality data streams, with the low quality recording being wirelessly sent to a remote unit. This allows the user to view and adjust the camera settings remotely during recording. [1] The Court concluded that Contour IP Holdings’ advances in technology allowed the claims to describe more than just wireless data transfer. They noted that, unlike Yu v. Apple, Inc., claims there did not address any technical challenges, as the idea of taking multiple pictures and combining them to enhance each other was well-known to photographers for many years. SS 101. Contact your Dinsmore attorney to learn more and frame your IP strategy based on the snapshot win.
