<em> Contour IP Holding LLC v. GoPro, Inc. </em>
The Federal Circuit reversed the district court ruling, determining that claim 11 of the ‘954 patent and claim 3 of the ‘694 patent were directed to patent ineligible subject matter under 35 U.S.C. § 101 and remanded for further proceedings.
Attribution
Contour IP Holding LLC (Contour) brought a suit against GoPro for patent infringement. GoPro sought summary judgment against Contour on the grounds that Contour’s ‘954 and ‘694 patents were patent ineligible under 35 U.S.C. § 101.
Contour claims mainly focus on U.S. Patent Nos. 8,890,964 (“‘954 Patent”) and 8,896,694 (“‘694 patent”). The two patents share virtually identical specifications, and the Court refers specifically to ‘954 patent specification when discussing both patents. The patents relate to portable, point-of-view (“POV”) video cameras. POV video cameras are used to capture a scene from a user’s “point-of-view" rather than the standard third-person viewpoint. The ‘954 and ‘694 patent's specification discloses a “hands-free, POV action sports video camera” that is configured for remote image acquisition control and viewing. The primary concern with POV video cameras is difficulty adjusting recording settings or a point of view to match the user’s recording preference. The patent describes wireless technology in video cameras allowing the camera to record two videos, a high-quality and low-quality version. The low-quality version is sent in real-time to a remote device, where the user can see the recording and adjust the recording settings, such as light levels and audio settings. The high-quality video is then saved onto the camera after filming. Contour targeted GoPro’s device, which performs the dual recording aspect, arguing that GoPro infringed on its ‘954 and ‘694 patents.
Contour originally sued GoPro in 2018 and asserted a patent infringement claim at the United States District Court for the Northern District of California. In 2021 after the District Court granted partial summary judgment, GoPro denied infringement and asserted a defense that claim 11 of the ‘954 patent and claim 3 of the ‘694 patent were patent ineligible under 35 U.S.C §101. The District Court originally denied GoPro’s motion but agreed the second time. The District Court agreed with GoPro and entered judgment against Contour. Contour then appealed to the Federal Circuit.
GoPro argued the patents were ineligible under 35 U.S.C §101. The Supreme Court has determined that exceptions exist to the requirements of § 101. To determine if a patent is ineligible the Supreme Court developed a two-step test known as the “Alice” test (in reference to the ruling of Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014)).
Step one considers whether the claims are directed at an abstract idea. If the claims are not directed at an abstract idea the Alice inquiry fails. If the Court concludes that the claims are directed to an abstract idea then step two asks whether the claims recite “significantly more than an abstract idea itself.” The Federal Circuit Court determined that GoPro did not argue that the camera’s dual recording streams were directed to an abstract idea and therefore the Alice inquiry failed.
The Federal Circuit found that claim 11 improved the POV camera through a combination of claim limitation and the requirement that the claimed POV camera processor be configured to record low and high-quality data streams in parallel. The claims require specific technological means that provide a technical improvement to the real-time viewing capabilities of a POV camera’s recording. The Federal Circuit stated that the District Court erred in its opinion that the claims were drawn to an abstract idea.
The Federal Circuit rejected GoPro’s argument that Contour’s claims were directed to an abstract idea of wireless network communication. The Court then found that claim 11 of the ‘954 patent describes more than wireless data transfers within a particular technological environment and enables the claimed POV camera to “operate differently than it otherwise could”. The Court found that these claims were directed towards a technological solution to a technological problem.
The Court found that GoPro failed to show patent ineligibility. The improvement of the POV camera, generating high- and low-quality video streams and transferring the lower-quality stream to a remote device, are reflected in the claims. The claims recite patent-eligible subject matter at Alice step one. The Federal Circuit reversed the District Court's ruling because GoPro failed to properly show that the patents were ineligible.
The Federal Circuit found that GoPro arguments were unpersuasive and that the District Court erred in concluding the claims were directed to an abstract idea. The Court also found that claim 11 of the ‘954 patent and claim 3 of the ‘694 patent were not directed to patent-ineligible subject matter. Therefore, the Court did not need to proceed to step 2 of the Alice Inquiry for this specific case. Thus, the Federal Circuit reversed the District Court decision and remanded the case.