Everything Old is New Again!* Not So!
Published: May 11, 2017
*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.” The song was a hit, and the phrase has a lot of relevance to everyday life, but the Federal Circuit isn’t buying it.
In RecogniCorp, LLC v. Nintendo Co. (Fed. Cir. 2017) 2017 U.S. App. LEXIS 7528, the Federal Circuit struck down a patent on the grounds that the invention was not new – it had been done before – way before– in 1775 by Paul Revere.
RecogniCorp’s patent covered a method and apparatus for encoding and decoding image data. The invention was intended to solve problems that arise in the digital transmission of images, including decreased image quality as the images are compressed and transmitted.
RecogniCorp sued Nintendo for patent infringement. The case was transferred to the Western District of Washington and stayed pending reexamination by the Patent and Trademark Office. After the reexamination concluded, the district court lifted the stay. Nintendo then moved for judgment on the pleadings, arguing that the patent’s claims were directed to ineligible subject matter under 35 U.S.C. §101. Under that statute and case law, just about every type of invention can be patented, except for those that relate to laws of nature, natural phenomena, and abstract ideas. Nintendo argued that RecogniCorp’s invention was an abstract idea, and therefore unpatentable.
The district court granted Nintendo’s motion, finding the claims to be directed to ineligible subject matter as an abstract idea.
On appeal, the Federal Circuit affirmed the district court’s decision. The court applied the Supreme Court’s two-part test set forth in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014) for determining whether a claimed invention is patent-eligible. In applying the first step of the Alice test, the court determined that RecogniCorp’s claims were directed to an abstract idea. The method of encoding and decoding images was a standard method, which the Court said had been used before, in Morse code, in ordering fast food at restaurants using a number system, and in Paul Revere’s famous phase “one if by sea, two if by land.” The methods of RecogniCorp’s invention rely on encoding something at one end and decoding it at the other end, which is a concept or idea that has been used in many different situations.
Next, the Court applied Alice’s second step to decide whether there was an inventive concept that transformed the claim into a patent-eligible application. The court said that nothing in RecogniCorp’s claims transformed the abstract idea into subject matter that was patent-eligible. Because the claims failed both prongs of the Alice test, the court held that the claims were not patentable subject matter.
As most people know, Paul Revere was a Patriot during the American Revolution who is best known for warning the colonial militias that the British were getting ready to attack, before the battles at Lexington and Concord. He helped create an intelligence and watch operation by the colonists over the British. On April 18, 1775, Paul Revere was told that the British were leaving Boston for Cambridge by boat, heading on to Lexington and Concord, to seize the Patriots’ weapons at Concord and to capture their leaders Samuel Adams and John Hancock. Revere had previously told the church’s sexton to alert the colonists to the British by signal using the lanterns in the church’s steeple: “one if by land, two if by sea.” On that night, Revere told the sexton to light two lanterns in the steeple. Revere then quietly rowed a boat past a British warship to get to Charleston, and then rode by horseback into Lexington, spreading the warning as he went. More riders joined him in the night, riding out through the countryside in a system the colonists called “alarm and muster.” Revere was captured by the British (but later released, although they kept his horse).
Paul Revere helped stop the British in 1775, and, 242 years later, helped stop RecogniCorp’s patent.
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