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RecogniCorp, LLC v. Nintendo Co., Ltd

April 28, 2017

Federal Circuit No. 2016-1499

Author: Thomas Negley

In RecogniCorp, LLC v. Nintendo Co., Ltd. (Fed. Cir. April 28, 2017), the Federal Circuit affirmed the subject matter ineligibility of claims relating to encoding and decoding image data.  The claims at issue included, inter alia, displaying facial feature images, incorporating a selected facial feature image into a composite image associated with a composite facial image code, "performing at least one multiplication operation on a facial code using one or more code factors as input parameters to the multiplication operation," and reproducing the composite image based on the composite facial image code.

The Federal Circuit held that the claims were directed to "encoding and decoding image data, an abstract idea," analogizing the claims to morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere’s “one if by land, two if by sea.”  RecogniCorp argued that claiming use of a mathematical formula does not necessarily render a patent ineligible.  The Federal Circuit agreed, but held that adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim nonabstract. 

The Federal Circuit further held that the claims "provide no inventive concept to render them eligible under § 101."  The Federal circuit stated that RecogniCorp had not alleged a particularized application of encoding and decoding image data, noting that claim 1 does not require a computer, and can be practiced verbally or with a telephone.  While claim 36 claims the use of a computer, the Federal Circuit further noted that the use consists of taking an abstract idea and simply applying it with a computer, which is insufficient to transform an abstract idea into patent eligible subject matter