Cassidy Serger, Contributing Member 2024-2025
Intellectual Property and Computer Law Journal
I. Introduction
Creative innovation is constantly occurring, from cloning sheep to developing board games, but not all inventions are eligible to receive patent protection. Congress outlined what subject matter is eligible for patenting in § 101 of the Patent Act.[1] The boundaries of patent-eligible subject matter are critical to achieve the ends of the Patent Act, namely, promoting science and the useful arts.[2] Abstract ideas and principles of math and science are ineligible for patenting so as to enable public access to the tools of innovation.[3] In Contour IP Holdings, Inc. v. GoPro, Contour owned a patent directed to wireless technology in a video camera wherein the camera is able to send real time information to remote devices. Further, the camera system is configured to generate two video recordings, one in high quality and one in low quality, in which the lower quality is streamed for easier real time playback, and the higher quality footage is stored for later access.[4] GoPro filed suit under the theory that the claims were drawn to patent ineligible subject matter, namely, abstract ideas.[5] This article explores the implications of the recent Federal Circuit Decision in Contour IP Holdings, Inc. v. GoPro, especially in the realm of patent eligible subject matter. Part II provides background on the current Supreme Court doctrines underlying patent eligible subject matter and historical cases that provide the modern framework. Part III discusses the recent case Contour IP Holdings v. GoPro and the Federal Circuit’s approach and reasoning under Supreme Court tests for patent eligibility. Finally, Part IV concludes by summarizing the decision and noting the ineffectiveness of the current test.
II. Background
Point-of-view cameras allow users to capture their perspective as they engage in an activity and view it later or share with others.[6] This development in technology combines software and hardware to enable new forms of media generation and consumption.[7] In Contour IP Holdings, Inc. v. GoPro, Contour owned a patent directed to a point-of view camera and a District Court held that the invention was ineligible for patenting because it was an abstract idea.[8] The Patent Act states that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”[9] In doing so, § 101 lays out what subject matter is eligible to receive a patent.[10] Key judge-made exceptions include abstract ideas, laws of nature, and mathematical and scientific principles.[11] As the purpose of patent law is to promote science and the useful arts, excluding others from using these abstract ideas and principles would prevent progress, hence their categorical exclusion from the realm of patent eligible subject matter.[12] To promote this policy, the Framers contemplated a bargain: a temporary right to exclude in exchange for the disclosure of the innovation to the public.[13] The right to exclude, however, cannot extend to the very principles of science and innovation otherwise the entire field of art would be stifled. Thus, the determination of patent eligible subject matter is critical to achieve the ends of the Patent Act.
The Supreme Court’s Patent Eligibility Jurisprudence
The Supreme Court examined eligibility in 1978, and, in Parker v. Flook, a patent was directed to a method for updating an alarm for a catalytic converter.[14] The claim was largely drawn to a mathematical formula.[15] Quoting Funk Bros. Seed v. Kalo Inoculant, the Court noted that “he who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes.”[16] Further, the court stressed that mathematics must be publicly available.[17] Therefore, the Court assumed that the mathematical formula was within the scope of the prior art and examined the claim for a patentable invention.[18] Thus, absent some novel activity in the physical world beyond math, the claim was not eligible subject matter.[19] Finding no such inventive activity, the Supreme Court held the claim invalid for lack of eligible subject matter.[20]
Unsatisfied with its prior subject-matter eligibility doctrinal decisions, the Supreme Court took up a series of eligibility cases in the 2000s. First, in Mayo v. Prometheus Labs, the claims of a patent were drawn towards administering drugs for inflammatory conditions.[21] Scientists already understood this phenomenon, and when the drug went over an acceptable range, patients would experience liver toxicity.[22] Therefore, the Court derived a two-step test: first, the court inquires if there is a patent ineligible concept.[23] If so, the second step requires a court to examine for additional content that is transformative.[24] Thus, in Mayo, dosage calibration, whether automated or not, was held ineligible as the pharmacology was an abstract idea with no inventive principle or transformation.[25]
Next, in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, the patent at issue was aimed towards automating a process of putting funds in escrow.[26] The invention was a computer implemented scheme for mitigating settlement risk by using a third party intermediary, which was the aforementioned computer program.[27] Here again the Court held that no amount of computerization made this fundamental economic process eligible for patenting.[28] The Court looked for an inventive concept, which it defined as an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.[29] This solidified the Mayo holding and further clarified that appending conventional steps at a high level of generality does not supply an inventive step.[30] Further, this cautioned courts that merely computerizing a step is not sufficiently inventive to overcome subject matter eligibility standards.[31]
Thus, the Supreme Court mandated the Alice test to determine if patent claims are directed towards patent ineligible subject matter.[32] Step one of the Alice test requires the court to consider whether claims at issue are directed to an abstract idea. If they are not, the inquiry ends, and the claims are eligible subject matter. However, if they are directed to ineligible subject matter, step two necessitates courts to determine whether the claims recite something more than the abstract idea itself by including elements sufficient to transform them into patent eligible subject matter.[33]
A large portion of information technology and software stems from mathematical principles and abstract ideas. Therefore, software innovations face challenges under this doctrine and applicants often encounter § 101 rejections.
Contour IP Holdings v. GoPro
More recently, the Federal Circuit has been tasked with determining patent eligible subject matters using the Alice test. Contour sued GoPro for patent infringement over point-of-view digital video camera products in Contour IP Holdings v. GoPro.[34] GoPro moved for summary judgment on the grounds that Contour’s claims were ineligible under § 101.[35] The district court agreed, but the Federal Circuit reversed.
The patents at issue are owned by Contour and relate to portable point of view video cameras that are frequently used to capture a scene from the user’s perspective, rather than from a third person viewpoint.[36] Frequently, a user will mount the camera to something where they cannot see or adjust, like their helmet.[37] Therefore, developers implemented a wireless technology to send camera information in real time to a remote device, like a cell phone, so that the user can see what is being recorded and adjust the settings in real time.[38] A preferred embodiment included a method of capturing two images at once and using them to develop the highest quality resolution.[39]
Contour sued GoPro for infringing these patents.[40] The District Court construed the claim as directed toward the abstract idea of taking two photos and using one to enhance the other in some way.[41] The Federal Circuit ruled that the District Court characterized the claims at an impermissibly high level of generality.[42] Quoting Enfish, LLC v. Microsoft Corp,, the Federal Circuit noted that the practice of “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.”[43] Instead, the Federal Circuit found that the claim at issue describes more than just a data transfer, but instead enables the camera to “operate differently than it otherwise could.”[44] This means that the claims are directed to a technical solution to a technical problem, not to an abstract idea. Thus, the Federal Circuit found the claims are not directed to patent ineligible subject matter, stopping at the first step of the Alice test.[45]
III. Discussion
The Federal Circuit has a desire to uphold patents that represent a specific technical advancement, especially when accompanied by a solution or approach. This is especially critical as § 101 represents a crucial doctrine in patent law where the Courts can draw lines to prevent overreaching right of exclusion. This allows Courts to monitor and promote innovation. Therefore, § 101 is too important for its exceptions to swallow the rule, as advised against by the Federal Circuit.[46]
In Contour, the Federal Circuit surely reached the right conclusion, but their approach likely renders the second step of the Alice test moot. Contour engaged in the Alice test, but stopped at step one.[47] During the analysis, the Federal Circuit looked to see if the claims were directed towards patent ineligible subject matter; here, an abstract idea.[48] When read as a whole, the Federal Circuit found that the claim is directed to a specific measure that improves the relevant technology.[49] To get here, the Federal Circuit cited claim limitations and requirements that the camera be configured to record low and high quality data streams in conjunction with a low quality stream to a remote device.[50] Notably, the District Court’s construction of the word “generate” in the claim as requiring multiple streams “in parallel” gave the claim a permissibly narrow approach and did not cover other ways that a camera could provide multiple streams of varying quality.[51] Therefore, the claim was properly drawn towards a specific improvement in technology, not a patent ineligible subject matter. The analysis ended here, as the court reached the conclusion that the claims are not patent ineligible.
However, the second step of Alice would have required the court to determine whether the claims include elements sufficient to transform them into patent eligible subject matter. Here, GoPro argued that Contour’s claims are simply directed to the abstract idea of wireless network communication and taking two different video streams.[52] There is merit to this argument – Contour is surely using widely known technology in wireless communication – and this could be construed as an abstract idea, like it was by the District Court. Had the Federal Circuit accepted this interpretation, they would have engaged in Alice’s second step.
This second step, however, would have resulted in the same outcome. In looking to see if the claims include elements sufficient to transform them into patent eligible subject matter, the court would have noted the generation of parallel streams as it did in its step-one analysis. The system surely represents a transformative application of the technology. Further, the use of a wireless network in tandem with parallel video streams as applied in remote camera use is a meaningful step in the art field and adds patentable value to whatever abstract ideas the innovators are employing to achieve their results.
Therefore, the Federal Circuit has the ability and the expertise to police the boundaries of patent eligible subject matter and promote innovation while also protecting inventions. However, its use of Supreme Court tests demonstrates the almost useless framework that the Supreme Court handed down to the Federal Circuit. When courts are looking at the two-step Alice test, the inquiry is almost fully contained within the first step. Meaningful applications of technology are unlikely to fail the first step. And if they do, the second step seems unlikely to save them with its almost identical inquiry via its desire for specific application and contribution to the art.
The Federal Circuit’s inquiry, therefore, more closely resembles the analysis in Parker v. Flook; it is looking for inventive principles that transform abstract subject matter, and when it does so, it needs only one step. The Federal Circuit frames this analysis in the two-step Alice test mandated by the Supreme Court, but this framework adds minimal value to the inquiry. Alice’s second step asks courts to determine if there are sufficient elements to transform patent ineligible subject matter. However, when these elements are present, the claims are not abstract subject matter, and the claims more than likely would have immediately succeeded at the first step of the inquiry. The second step of Alice is therefore redundant and immaterial to the inquiry.
IV. Conclusion
Courts must examine claims to determine if they are drawn towards patent eligible subject matter. Through Contour, the Federal Circuit deemed a software-based invention whose claims are drawn to a specific, technical advancement and application as patentable.[53] This is critical as innovation continues to grow in software-based fields, like AI and computer design. However, courts must remain cautious to ensure that abstract ideas and basic principles remain in the public domain to enable successful future innovation in the technology.
Ultimately, the Alice framework handed down by the Supreme Court is not an effective tool to promote these measures. When the Federal Circuit used this test in Contour, it stopped at the first step, deciding that the claims were narrowly drawn and not directed to abstract principles.[54] This was the entire inquiry and effectively policed the border of patent eligible subject matter. The second step is simply redundant; when claims include elements sufficient to transform abstract ideas, the claims are simply not drawn towards abstract ideas.
[1] 35 U.S.C. § 101
[2] In re Bergy, 596 F.2d 952, 955 (Fed. Cir. 1979).
[3] Id.
[4] Contour IP Holdings, Inc. v. GoPro, 113 F.4th 1373, 1374. (Fed. Cir. 2024).
[5] Id.
[6] U.S. Patent No. 8,890,954.
[7] Id.
[8] Contour IP Holdings, Inc. v. GoPro, 113 F.4th 1373, 1374 (Fed. Cir. 2024).
[9] 35 U.S.C. § 101
[10] Id.
[11] Parker v. Flook, 487 U.S. 584, 585 (1978).
[12] In re Bergy, 596 F.2d 952, 955 (Fed. Cir. 1979).
[13] Amgen, Inc. v. Sanofi, 598 U.S. 594, 605 (2023).
[14] Parker, 487 U.S. at 585.
[15] Id.
[16] Parker,quoting Funk Bro. Seed v. Kalo Inoculant, 333 U.S. 127, 128 (1948).
[17] Parker,quoting Gottschalk v. Benson, 409 U.S. 63, 65 (1972).
[18] Id.
[19] Id.
[20] Id.
[21] Mayo v. Prometheus Labs, 566 U.S. 66, 73 (2012).
[22] Id.
[23] Id.
[24] Id.
[25] Id. at 92.
[26] Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 214 (2017).
[27] Id.
[28] Id.
[29] Id. at 217.
[30] Id.
[31] Alice Corp. Pty. Ltd., 573 U.S. at 217.
[32] Id. at 219.
[33] Id. at 221.
[34] Contour IP Holdings, Inc. v. GoPro, 113 F.4th 1373, 1378 (Fed. Cir. 2024).
[35] Id.
[36] Id.
[37] Id.
[38] Id.
[39] Id.
[40] Contour IP Holdings, 113 F.4th at 1379.
[41] Id.
[42] Id.
[43]Contour, quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
[44] Contour, quoting ChargePoint, Inc. v. Sema Connect, Inc., 920 F.3d 759, 759 (Fed. Cir. 2019).
[45] Contour IP Holdings, 113 F.4th at 1380.
[46] Mayo v. Prometheus Labs, 566 U.S. at 1293-94.
[47] Contour IP Holdings, 113 F.4th at 1374.
[48] Id.
[49] Id. at 1380.
[50] Id.
[51] Id. Citing Claim Construction Order, 2018 WL 3428606 at *5
[52] Id. at 1380.
[53] Contour IP Holdings, LLC v. GoPro, Inc., No. 17-CV-04738-WHO, 2018 WL 3428606, at *5 (N.D. Cal. July 16, 2018).
[54] Contour IP Holdings, 113 F.4th at 1380.
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