Holding: Step 1 of the Alice test for determining patent eligibility requires an examination of the focus of the claimed advance over the prior art by ascertaining the basic character of the claimed subject matter. The claims must be directed to a specific means or method that improves the relevant technology rather than simply being directed to an improved result.
Contour sued GoPro, alleging patent infringement of US Pat. Nos. 8,890,954 and 8,896,694, which is a continuation application of the ‘954 Patent. These patents relate to portable, point-of-view (“POV”) cameras typically used by action sports participants to record their activities. The claims of the patents are directed to wireless technology that allows the camera to send video to a remote device, such as a cell phone, so the user can view what is being recorded by the camera and adjust recording settings if desired. In particular, the patents claim that the POV camera is configured to generate video recordings in both high quality and low quality formats. The lower quality recording is streamed to the remote device, and the higher quality recording is saved to the camera to be viewed later. The district court construed the claims of the ‘954 Patent and the ‘694 Patent to require that the high quality and the low quality formats be generated at the same time, in parallel, rather than later creating the low quality format from a high quality recording.
At the district court, GoPro challenged the claims of the ‘954 Patent and the ‘694 Patent as being directed to patent ineligible subject matter under Section 101. Using the Alice test, at Step 1, the district court found the asserted claims of Contour’s patents to be directed to the abstract idea of creating and transmitting video and adjusting the video’s settings remotely. At Step 2, the district court found the asserted claims to recite only functional, results-oriented language and that the recited physical components only performed their basic generic tasks. Therefore, the asserted claims were found to be patent ineligible under Section 101.
The Federal Circuit reversed the district court’s finding of patent ineligibility, finding under Step 1 of the Alice test, that the asserted claims of the Contour patents are not directed to an abstract idea. Alice Step 1 analysis requires the court to examine the focus of the claimed advance over the prior art and to determine the basic character of the claimed subject matter, but to avoid describing the claim at a high level of abstraction, divorced from the claim language. In determining the focus of the claimed advance, the court must look to whether the claims are directed to a specific means or method that improves the relevant technology or if the claims are directed to a result or effect that itself is an abstract idea. Simply claiming an improved result, without anything more, is not sufficient to support patent eligibility. Preemption concerns arise when a result is claimed without providing a specific process or machinery for achieving the claimed result.
The Federal Circuit found the Contour patents’ requirement of recording multiple video streams in parallel to be a specific technological improvement to the real time viewing capabilities of a POV camera on a remote device. The claims recite more than a desired result, as the requirement that the video streams be recorded simultaneously does not generically cover all ways in which a camera may generate multiple video streams. Since the claims were not directed patent ineligible subject matter under Step 1 of Alice, there was no need for the Federal Circuit to proceed to Step 2.
Citation: Contour IP Holding LLC v. GoPro, Inc., 113 F.4th 1373 (Fed. Cir. 2024)
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