By Paul Cole* —

Study of the background to Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017), the subject of Michael Borella's earlier posting, reveals basis for his concerns about lack of analysis of the detailed disclosure of the specification and inattention to the detailed subject matter which was actually claimed.

A reader of Judge Reyna's opinion is prompted to question why a panel including Judges Lourie and Stoll, both experienced in patent matters, treated the invention dismissively.  Recognicorp LLC which is the assignee of the '303 patent is an entity set up to undertake patent enforcement.  A web search reveals nothing relevant about that company or its activities.  The panel may therefore have been misled into believing that Recognicorp was a mere troll, and that there was therefore nothing significant that could be said in favour of the patent and the entity owning it.

Further investigation reveals that this is an incomplete picture.  The earlier owner of the '303 patent is IQ Biometrix, Inc. of Kingwood, Texas whose president Greg J. Micek has said that the inspiration for setting up the company was the 9/11 events, and has explained that the company retains at least a contractual interest in the '303 patent.  It provides law enforcement and security technology solutions for government and private industry and its product FACES allows a user to create and re-create billions of human faces.  Facial features selected from a database are automatically blended together to produce a photo-quality composite facial image as is apparent from the images, see their website.  The technology helps law enforcement agencies identify, track and apprehend suspects, but also has wider uses, e.g., in education and theatre.

It is instructive to consider, as the Court omitted to do, whether the claimed subject matter falls positively within the "process" category of § 101.

The representative claim concerns a method for creating a composite image although it expressly recites only a single facial feature.  It starts with the steps of displaying facial feature images on a first area of a first display, the facial feature images being associated with facial feature element codes.  A facial feature image from the first area of the first display is selected via a user interface of the first device.  These steps are illustrated by the accompanying image downloaded from the website.  The user is offered a range of relatively small hairline images each one of which has an associated element code.  A selected hairline image is transferred from the first (right hand) area of the display to the second (left hand) area where a larger image is formed, a multiplication step being performed to show the selected hairline on an enlarged scale and to derive a facial image code.

However, as explained, e.g., with reference to Fig. 4 of the patent, to complete the composite image further classes of feature image are added to provide a complete facial image code which is then displayed on a second display, these further steps being illustrated by the following further images from the website.

The criteria for eligibility under the "process" category of § 101 are set out in Gottschalk v. Benson (1972), quoting Justice Bradley in Cochrane v Deener (1876):

A process is a mode of treatment of certain materials to produce a given result.  It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.  If new and useful, it is just as patentable as is a piece of machinery.  In the language of the patent law, it is an art.  The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.

Novelty was not in question and utility is supported by the fact that FACES has received a number of awards including the President's Award, Crime Stoppers International, 1999 as an outstanding contribution to law enforcement in the field of crime solving and is an official training tool for FBI agents.  The website includes quotes from serving police officers, of which the following is representative:

"I have been a law enforcement officer for over 30 years, having worked a variety of assignments which required composite drawings of suspects.  For those drawings I utilized a system utilizing individual foils to construct the desired image.  A complex, time-consuming process under the best conditions.  After becoming familiar with your system, I was so impressed that I showed several officers how to develop a composite drawing using your FACES software.  I know that this valuable gift will enhance our efforts in bringing to justice those who are intent on violating the law at the expense of society."  Byron C. Nelson, Chief of Police, Sequim Police Dept., Sequim, Washington.

The subject matter to be transformed is the various facial feature images, and their conversion to a composite image and reproduction on a second display are plainly transformational within the test set out in Gottsschalk.  The new result is set out in the '303 patent in problem/solution terms familiar to European practitioners and was acknowledged in the panel opinion.

Prior to the invention disclosed in the '303 patent, composite facial images typically were stored in file formats such as "bitmap," "gif," or "jpeg."  But these file formats required significant memory, and compressing the images often resulted in decreased image quality.  Digital transmission of these images could be difficult.  The '303 patent sought to solve this problem by encoding the image at one end through a variety of image classes that required less memory and bandwidth, and at the other end decoding the images.

The commercial success and police and other acclaim for FACES provides substantial evidence to support the inventive merit of the subject matter claimed in the '303 patent, and is strikingly reminiscent of the commercial success and industry praise in the en banc decision of the Federal Circuit in Apple Inc. v. Samsumg Electronics (October 2016), where a video showed Steve Jobs unveiling the slide to unlock feature of an iPhone at an Apple event and that when he swiped to unlock the phone, "the audience burst into cheers."  It was held that the jury had been presented with substantial evidence of praise in the industry that specifically related to features of the claimed invention, thereby linking that industry praise with the patented invention.

It therefore appears almost beyond argument that the claimed subject matter indeed falls positively within the process category, and that this should have been a conclusive holding avoiding the need for any consideration of the ineligible "abstract idea" category.  It is questionable whether that category can be invoked to "nibble away" at the full scope of the "process" category without raising issues of separation of powers.  Shortly before his appointment to the Supreme Court, Judge Neil Gorsuch (as he then was) explained in Gutierrez-Brizuela v. Lynch (2016):

Conversely, what would happen if politically unresponsive and life-tenured judges were permitted to decide policy questions for the future or try to execute those policies?  The very idea of self-government would soon be at risk of withering to the point of pointlessness.  It was to avoid dangers like these, dangers the founders had studied and seen realized in their own time, that they pursued the separation of powers.  A government of diffused powers, they knew, is a government less capable of invading the liberties of the people.  See  The Federalist No. 47 (James Madison) ("No political truth is . . . stamped with the authority of more enlightened patrons of liberty" than the separation of powers).

Scalia and Garner in their classic book Reading Law, The Interpretation of Legal Texts, Thomson/West, 2012 devote an entire chapter to the so-called Omitted-Case Canon, supporting the view that supplying omissions in statute law transcends the judicial function, and quoting William Blackstone in the introduction:  "[L]aw, without equity, though hard and disagreeable, is much more desirable for the public good than equity without law: which would make every judge a legislator, and introduce most infinite confusion."  In the context of eligibility under § 101 the classic statement in United States v. Dubilier Condenser Corp that the Court should not read into the patent laws limitations and conditions that the legislature has not expressed has been cited with approval in Diamond v Chakrabarty and Diamond v Diehr and has never subsequently been questioned.

It is strongly arguable that the Alice test for excluded subject-matter was employed in Regniocorp with disregard for the statute and producing a result contrary to what statute intended.  It is submitted that decisions such as Prometheus, Alice, and Myriad should be interpreted in accordance with standards rules of interpretation and should not be gold-plated, especially given the clearly expressed and almost universally ignored caution with which those decisions were expressed.  In Alice, Justice Thomas indeed said that:  "We must first determine whether the claims at issue are directed to a patent-ineligible concept."  However, that remark is most plausibly interpreted as a pragmatic response to the facts and arguments with which the Court was presented and not as a general instruction as to the approach to be followed in all future cases.  It should not be interpreted as a decision by a side wind that the judicial exclusions should enjoy priority over the categories of eligibility created by Congress in § 101.

In the panel's Alice step one analysis, it was held that the claim was directed to the abstract idea of encoding and decoding image data and reflected standard encoding and decoding.  No references were quoted in support of that proposition, and the opinion does not record any evidence about what was standard practice immediately prior to the invention in the technical field of encoding and decoding image data.  The examples given are in different fields and for different purposes:  Morse code for the transmission of alphanumeric characters and Paul Revere's signalling system for the transmission of pre-arranged instructions, neither of which have relevance to the transmission of image data.  The panel fastened onto a reference in the Background section of the patent to paper strips containing exemplary features, without acknowledging the inconvenient truth that they were in hard-copy format and that there was no evidence that the idea of encoding those strips had ever occurred to users.  While acknowledging the warning in Enfish that an improperly high level of abstraction should be avoided and recited features should not be ignored, the panel concluded that "[the] patent claims a method whereby a user starts with data . . . and ends with a new form of data."  As clearly recited in the claim the user starts with facial feature images on a display, selects particular features to form a composite image, and ends with a composite image reproduced on a second display.  The allegation that the user starts with and ends with data is therefore wrong not merely as a matter of opinion but as a matter of plain fact, and accordingly, the holding that the claim is directed to subject-matter that is no more than an abstract idea is untenable.

In Alice step two, the panel held that "[h]ere, RecogniCorp has not alleged a particularized application of encoding and decoding image data.  Indeed, claim 1 does not even require a computer; the invention can be practiced verbally or with a telephone.  J.A. 28 (col. 4 ll. 59–63); J.A. 32 (col. 11 ll. 53–59)."  Although the claimed method reduces facial features to simple codes and magnifications that can be transmitted verbally by telephone (although this seems not to be the normal use in practice) the panel has picked on the verbal transmission blindly and without reference to its overall significance and context, and has magnified that reference out of all proportion.  In reality, the patent deals with displays (which as a matter of common general knowledge and context form parts of computers) and with images on those displays which as is the common experience of all of us who send images as e-mail attachments involve tens or hundreds of kilobytes of data.  The suggestion that "the invention can be practiced verbally" properly belongs in the fictional Wonderland of Lewis Carrol's Alice rather than the real world in which we are all compelled to live.  Moreover, the significance of "multiplication" has been arbitrarily disregarded whereas it is apparent in context that it relates to necessary scaling and image production and is a technical feature of the process.

It is understood that an application for en banc reconsideration is likely to be filed.  Not only is it difficult to identify a more deserving case for such reconsideration, but as a matter of public interest the opportunity should be taken to re-focus on statutory compliance (which as relevant cast-law shows already contains non-trivial tests) and to relegate the judicial exceptions to the exceptional cross-checking role that they correctly deserve.

* Mr. Cole is a European Patent Attorney and Partner with Lucas & Co. in Warlingham, Surrey, UK and Visiting Professor at the Centre for Intellectual Property Policy & Management at Bournemouth University.