Post-Alice Decision on Patent Ineligible Processes

The Court of Appeals for the Federal Circuit, in Digitech Image Technologies Llc V. Electronics For Imaging Inc. decided that a patent directed to the generation and use of an “improved device profile” that describes spatial and color properties of a device within a digital image processing system was not patent eligible, as “abstract.”  The claims themselves were very broad.  The apparatus claim was short, and claimed:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

first data for describing a device dependent transformation of color information content of the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

The court compared this claim to the signal claims of Nuijten, and simply stated that “the device profile claims of the ′415 patent do not require any physical embodiment, much less a non-transitory one. The device profile, as claimed, is a collection of intangible color and spatial information. We therefore hold that the device profile claims of the ′415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible.” The method claims are similarly quickly dispatched.  The method claims too were quite broad, claiming:

10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;

generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and

combining said first and second data into the device profile.

The court stated that “the above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device. As discussed above, the two data sets and the resulting device profile are ineligible subject matter. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”

This, I think is key, going forward:  Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.

The court does provide a clue for how to write patent-eligible claims under this new regime.  It notes that “The claim generically recites a process of combining two data sets into a device profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image. The only mention of a “digital image reproduction system” lies in the claim’s preamble, and we have routinely held that a preamble does not limit claim scope if it “merely states the purpose or intended use of an invention.”

I, for one, am planning on affirmatively reciting the use of any data being claimed, and at least linking it to a specific element, like an output or a processor.

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