On August 6, 2024, in Mobile Acuity Ltd. v Blippar Ltd., __F.4th__; 2024 U.S. App. LEXIS 17573* (Fed. Cir. Aug. 6, 2024), the Federal Circuit upheld the Rule 12 dismissal of Mobile Acuity’s patent infringement lawsuit against Blippar on the basis that the two patents-in-suit claimed ineligible subject matter under 35 U.S.C. § 101. In general, the patents-in-suit disclosed methods and devices relating to storing information so that it could be accessed using a captured image.
The Federal Circuit first considered whether the claims analyzed by the district court were representative of all the asserted claims. Mobile Acuity argued that the claims considered by the district court were not representative. The Federal Circuit disagreed noting that once a challenger presents a prima facie case that claims are representative, “the burden shifts to the patent owner to present non-frivolous arguments as to why eligibility of the representative claims cannot be fairly treated as decisive of the eligibility of all claims in the group.” Id at *15. Mobile Acuity did not present a non-frivolous argument on this point. Id. at *19-*20. The Federal Circuit, however, stressed that it is important for courts to resolve any disputes over representativeness and clearly state which claims are, and are not, adequately represented by others. Id.
Next, the Federal Circuit analyzed the representative claims under the two-step framework established by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). This framework requires courts to first determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. If so, the court must then determine whether the elements of the claim, either individually or as an ordered combination, transform the nature of the claim into a patent-eligible application.
At step 1, the Federal Circuit examined the language of the representative claims and determined the claims recite generalized steps of collecting, analyzing, and presenting information. As such, the Federal Circuit found that the claims “consist solely of result-orientated, functional language and omit any specific requirements as to how these steps of information manipulation are performed” and held that “claims reciting generalized steps of collecting, analyzing, and presenting information, using nothing other than the conventional operations of generic computer components, are directed to abstract ideas.” Id. at *22 (emphasis added).
Reviewing the claim language requiring that a portion of a second image be “corresponding” with a portion of a first image, the Federal Circuit concluded that the claim language did not invoke a specific method for comparing the images and further concluded that “the claim provides no details as to how the corresponding portions of images are determined.” Id. at *22-*23. Additionally, the Federal Circuit found that the other representative claims “add nothing of significance to the eligibility analysis.” Id. at *23. In particular, the Federal Circuit found that claim language reciting extracting and matching “interest points” from the first and second images to perform the correspondence between images, provided no specificity as to how the “interest points” were determined or used in image comparison. Id. Mobile Acuity had argued that the specification taught one of ordinary skill in the art how to match and compare the user-uploaded image through the use of correspondence and interest points. The Federal Circuit rejected this argument because this teaching “is not included in the claims, yet it is the claims that must supply the non-abstract idea.” Id.
The Federal Circuit noted that the district court had found that the additional claim limitations only provided the generic computer environment to carry out the abstract idea and that the additional limitations did not add enough to transform the claims from abstract to concrete. Id. at *24.
At step 2, Mobile Acuity argued that the inventive concept in its claims was using the object (or location) itself as the trigger for leaving information to be collected in the future. The Federal Circuit rejected that argument noting that the “purported ‘inventive concept’ is part of the abstract idea of comparing images and displaying information based on the comparison.” Id. at *26. It further noted that an abstract idea “cannot supply the inventive concept that renders the invention ‘significantly more’ than that abstract idea at step two.” Id. (citing Simio, LLC v. Flexsim Software Prods. Inc., 983 F.3d 1353, 1364 (Fed. Cir. 2020); Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (“Instructing one to ‘apply’ an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent-eligible.”)).
Mobile Acuity also argued that the inventive concept could be found in the claim limitations requiring use of “interest points” for image comparison, which purportedly “provides users an innovative way to retrieve information.” Id. at *27. The Federal Circuit rejected this argument noting that methods of mapping interest points to compare images was “expressly described in the specification as existing in the prior art.” Id.
Finally, Mobile Acuity had included allegations in its first amended complaint that its technology: enabled the use of an object or location itself as the marker for image searching, providing a seamless user experience rather than relying on a conventional visible cue; eliminated the need for the manufacturing step that adds a visual cue; and allowed companies to measure campaign effectiveness and return-on-investment based on the object itself. Id. at *4. Mobile Acuity also argued that the allegations in its proposed third amended complaint more clearly set forth the inventive concept of using physical objects as the trigger for searching and providing access to data. The Federal Circuit rejected these arguments finding that the allegations in the first amended complaint and proposed third amended complaint “was nothing more than the implementation of an abstract idea with conventional computer operations, and is not ‘significantly more’ than the abstract idea itself, as required to survive step two of the Alice test.” Id. at *28.
The Federal Circuit also upheld the district court’s denial of Mobile Acuity’s motion for leave to file the third amended complaint. The Federal Circuit agreed with the district court’s assessment that any further amendments would be futile because the proposed amendments did not address the fundamental issue of patent eligibility. Id. at *28.
This decision highlights the ongoing challenges that patent holders face when their claims are attacked on eligibility grounds, particularly in the context of computer-implemented inventions, because often times such attacks involve addressing issues that are more properly analyzed under other parts of the patent statute. For example, at step 1, rejecting Mobile Acuity’s claims for failing to provide the requisite specificity as to how the invention is carried out seems to impose an unstated enablement requirement on the claims. But patent owners are not required to, and therefore typically do not, include the implementation details necessary to satisfy the enablement requirement in their claims. Similarly, at step 2, rejecting Mobile Acuity’s claims because the specification described methods of mapping interest points to compare images as existing in the prior art seems to impose a novelty requirement on the claims. But just because such methods existed in the prior art does not mean that Mobile Acuity’s method was well understood, routine, or conventional. Patent holders must be wary of these hidden hurdles when trying to overcome section 101 challenges.