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Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. -- Data structures per se not patentable

In Digitech Image Technologies, LLC v. Electronics For Imaging, Inc., Case No. 13-1600 (Fed. Cir. July 14, 2014), the Federal Circuit affirmed a district court decision invalidating all claims of Digitech’s patent (U.S. Patent No. 6,128,415).  In making its decision, the court considered three independent claims of the ‘415 patent.

Independent claim 1 recites “A device profile … comprising … first data … and second data ….”  Similarly, independent claim 26 recites “A device profile … comprising data ….”  The claims do not recite any storage media holding the device profiles, but are entirely directed to the profiles themselves.  These claims appear on their face to be directed to data structures per se, and the Federal Circuit so held, finding that claims 1 and 26 are “directed to information in its non-tangible form.”[1] Notably, the application that led to the ‘415 patent was filed on September 6, 1996, but In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994) had already established that a “data structure” “is not one of the categories of subject matter recited in Sec. 101.”  Thus, the rejection of this claim is based on case law from 1994, and does not reflect a post-Alice change.

Independent claim 10 recites “A method of generating a device profile … comprising: generating first data …; generating second data; and combining said first and second data into the device profile.”  The Federal Circuit acknowledged that method claims are directed to one of the statutory categories, but determined that the claim was directed to an abstract idea.  For support, the court cited Parker v. Flook, 437 U.S. 584, 595 (1978): “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”[2] The Federal Circuit acknowledged that Alice provides for a method of determining if claims that appear to be directed to abstract ideas actually “are directed to patent eligible subject matter.”[3] However, the Alice/Mayo rubric was not applied, because the method claim “is thus ‘so abstract and sweeping’ as to cover any and all uses of a device profile.”[4] Thus, the rejection of this claim was also based on old law – in this case, from the 1970s – and does not reflect a post-Alice change.

Accordingly, while some Internet commentators are asserting that Digitech represents a sweeping application of Alice to invalidate patents, that conclusion does not have strong support in the text of the opinion.

[1] Digitech at 9.

[2] Id. at 12.

[3] Id. at 13.

[4] Id. (citing Gottschalk v. Benson, 409 U.S. 63, 68 (1972)).

My thanks to Domenico Ippolito of Schwegman, Lundberg & Woessner, P.A., for this update.


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