GoPro Bid to Invalidate POV Camera Claims as Abstract Shut Down by CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion reversing a district court’s invalidation of patent claims challenged by GoPro, Inc. as patent ineligible. The CAFC said the district court erred in concluding at Alice step one that the claims were directed to an abstract idea and distinguished the case from its precedent in Yu v. Apple and ChargePoint v. SemaConnect. The opinion was authored by Judge Reyna.

The patents in question—U.S. Patent Nos. 8,890,954 and 8,896,694—are owned by Contour IP Holding LLC and cover “portable, point of view (‘POV’)” video camera technology. Specifically, they disclose a “‘hands-free, POV action sports video camera’ that is ‘configured for remote image acquisition control and viewing.’”

Contour sued GoPro in 2015, and again in 2021, alleging several of the company’s handheld action cameras infringed the patents. After the district court granted partial summary judgment of infringement against GoPro in the first lawsuit, GoPro challenged claim 11 of the ’954 patent and claim 3 of the ’694 patent as patent ineligible under 35 U.S.C. § 101. GoPro also filed a motion for judgment on the pleadings that the claims were ineligible under Federal Rule of Civil Procedure 12(c) in the second lawsuit, relying on the CAFC’s ruling in Yu v. Apple. In that case, the Federal Circuit found a claim that recited “image sensors, lenses that are mounted to the image sensors, a digital image processor and even analog-to-digital converting circuits” to be abstract.

The district court denied the Rule 12(c) motion but said “its decision was made without prejudice to GoPro’s raising § 101 patent ineligibility ‘again at summary judgment based on a factual record,’” according to the CAFC opinion. GoPro did so and this time the district court found that representative claim 11 “was directed to the abstract idea of ‘creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.” And at Alice step two, the district court said the claim “recites only functional, results-oriented language with ‘no indication that the physical components are behaving in any way other than their basic, generic tasks.’” The district court also cited Yu v. Apple in its reasoning.

But the CAFC disagreed with the court’s analysis and distinguished the Yu case.  Specifically, said the CAFC:

“Here, when read as a whole, claim 11 is directed to a specific means that improves the relevant technology. Claim 11 recites an improved POV camera through its combination of claim limitations and requirement that the claimed POV camera processor be configured to record low-and high-quality data streams in parallel, followed by the low-quality data stream’s wireless transfer to a remote device. With the claimed POV camera, a user can remotely view and adjust the desired recording in real time, with the elimination of bandwidth limitations on wireless data transfer. See ’954 patent, 20:9–16. The claims thus require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.”

This determination relies in part on the district court’s own claim construction, said the CAFC, which found the term “generate” in representative claim 11 to “require recording multiple video streams ‘in parallel.’” This indicates that the claims can’t over other ways of generating multiple streams, such as “in sequence,” said the CAFC. “Rather, the claims are drawn to a ‘specific means or method that improves the relevant technology.’”

The district court’s decision that the claims were drawn to an abstract idea “characterizes the claims at an impermissibly high level of generality,” said the Federal Circuit’s opinion. While GoPro argued the claims “simply employ known or conventional components that existed in the prior art at the time of the invention,” the CAFC said, even if true, “that alone does not necessarily mean that the claim is directed to an abstract idea at step one.”

Turning to GoPro’s reliance on Yu, the CAFC explained that the claims in Yu were clearly directed to “a longstanding, fundamental practice in photography.” But in the present case, “GoPro does not argue that a camera’s recording two video streams in parallel and wirelessly transferring the lower quality video stream to a remote device for real time viewing and adjustment was a long-known or fundamental practice supporting patent ineligibility at Alice step one.”

The opinion went on to distinguish Contour’s claims from those at issue in ChargePoint v. SemaConnect, another recent controversial Section 101 decision. There, the CAFC found that the claims “were drawn to the abstract idea of ‘communication over a network,’ applied to the context of electric vehicle charging stations.”  But here, “claim 11 of the ’954 patent describes more than wireless data transfer within a particular technological environment,” said the CAFC.

“The claims are directed to a technological solution to a technological problem,” the opinion added, holding that they therefore recite patent eligible subject matter at Alice step one, and there was thus no need to proceed to step two. The district court’s decision was reversed and remanded.

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Author: ronstik
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