Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., s. 2013–1600

• Decision Date: 11 July 2014
• Docket Number: 2013–1614,2013–1607,2013–1616,2013–1606,2013–1612,2013–1605,2013–1610,2013–1611,2013–1617,2013–1618.,2013–1604,2013–1602,Nos. 2013–1600,2013–1615,2013–1613,2013–1601,2013–1609,2013–1603,2013–1608,s. 2013–1600
• Citation: 758 F.3d 1344
• Parties: DIGITECH IMAGE TECHNOLOGIES, LLC, Plaintiff–Appellant, v. ELECTRONICS FOR IMAGING, INC., Sakar International, Inc. (doing business as Vivitar), General Imaging Company, Overstock.Com, Inc., Newegg, Inc., Newegg.Com, Inc., Xerox Corporation, Toshiba Corporation, Toshiba America Business Solutions, Inc., Toshiba America Information Systems, Inc., and Toshiba America, Inc., Defendants–Appellees, and Buy.Com, Inc., Defendant–Appellee, and B and H Foto and Electronics Corp., Defendant–Appellee, and Leaf Imaging, Ltd. (doing business as Mamiyaleaf), and Mamiya America Corporation, Defendants–Appellees, and Leica Camera AG and Leica Camera, Inc., Defendants–Appellees, and Fujifilm Corporation, Sigma Corporation, Sigma Corporation of America, Micro Electronics, Inc. (doing business as Micro Center), Pentax Ricoh Imaging Co., Ltd., Pentax Ricoh Imaging Americas Corporation, Ricoh Company, Ltd., Ricoh Americas Corporation, and Konica Minolta Business Solutions USA, Inc., Defendants–Appellees, and Asus Computer International, and Asustek Computer, Inc., Defendants–Appellees, and CDW LLC, Defendant–Appellee, and Victor Hasselblad AB and Hasselblad USA, Inc., Defendants–Appellees, and Mamiya Digital Imaging Co., Ltd., Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

758 F.3d 1344

DIGITECH IMAGE TECHNOLOGIES, LLC, Plaintiff–Appellant,

v. ELECTRONICS FOR IMAGING, INC., Sakar International, Inc. (doing business as Vivitar), General Imaging Company, Overstock.Com, Inc., Newegg, Inc., Newegg.Com, Inc., Xerox Corporation, Toshiba Corporation, Toshiba America Business Solutions, Inc., Toshiba America Information Systems, Inc., and Toshiba America, Inc., Defendants–Appellees,andBuy.Com, Inc., Defendant–Appellee,andB and H Foto and Electronics Corp., Defendant–Appellee,andLeaf Imaging, Ltd. (doing business as Mamiyaleaf), and Mamiya America Corporation, Defendants–Appellees,andLeica Camera AG and Leica Camera, Inc., Defendants–Appellees,andFujifilm Corporation, Sigma Corporation, Sigma Corporation of America, Micro Electronics, Inc. (doing business as Micro Center), Pentax Ricoh Imaging Co., Ltd., Pentax Ricoh Imaging Americas Corporation, Ricoh Company, Ltd., Ricoh Americas Corporation, and Konica Minolta Business Solutions USA, Inc., Defendants–Appellees,andAsus Computer International, and Asustek Computer, Inc., Defendants–Appellees,andCDW LLC, Defendant–Appellee,andVictor Hasselblad AB and Hasselblad USA, Inc., Defendants–Appellees,andMamiya Digital Imaging Co., Ltd., Defendant.

Nos. 2013–1600, 2013–1601, 2013–1602, 2013–1603, 2013–1604, 2013–1605, 2013–1606, 2013–1607, 2013–1608, 2013–1609, 2013–1610, 2013–1611, 2013–1612, 2013–1613, 2013–1614, 2013–1615, 2013–1616, 2013–1617, 2013–1618.

United States Court of Appeals, Federal Circuit.

July 11, 2014.

John J. Edmonds, Collins, Edmonds, Pogorzelski, Schlather & Tower, PLLC, of Houston, TX, argued for plaintiff-appellant. With him on the brief were Stephen F. Schlather and Shea Palavan.

Mark A. Lemley, Durie Tangri LLP, of San Francisco, CA, argued for all defendants-appellees. With him on the brief were Anthony S. Gabrielson and Tiffany D. Gehrke, Marshall, Gerstein & Borun LLP, of Chicago, IL, for CDW LLC; Gregory S. Tamkin and Case Collard, Dorsey & Whitney LLP, of Denver, CO, for Buy.com, Inc.; Paul T. Meiklejohn and Mudit Kakar, Dorsey & Whitney, LLP, of Seattle, WA, for Toshiba Corporation, et al.; William C. Rooklidge, Frank P. Cote, and Mark L. Blake, Jones Day, of Irvine, CA, for Electronics for Imaging, Inc.; Ezra Sutton, Ezra Sutton & Associates, P.A., of Woodbridge, NJ, for Sakar International, Inc.; Aaron Stiefel, Kaye Scholer, LLP, of New York, NY, for B and H Foto and Electronics Corp.; Michael H. Jacobs, Crowell & Moring LLP, of Washington, DC, for Leica Camera AG, et al.; Steven J. Routh, Sten Jensen, and John R. Inge, Orrick, Herrington & Sutcliffe LLP, of Washington, DC, and Christopher P. Broderick and William H. Wright, of Los Angeles, CA, for Fujifilm Corporation, et al.; J. Rick Taché, Greenberg Traurig, LLP, of Irvine, CA, for Leaf Imaging, Ltd., et al.; Joshua M. Masur and Zhuanjia Gu, Turner Boyd LLP, of Mountain View, CA, for Asus Computer International, et al.; and Mark C. Johnson, Kyle B. Fleming, and Nicholas J. Gingo, Renner, Otto, Boisselle & Sklar, LLP, of Cleveland, OH, for Victor Hasselblad AB, et al. Of counsel were Jason P. Grier, Baker & Hostetler, of Atlanta, GA, Katrina M. Quicker and Michael J. Riesen, Ballard Spahe, LLP, of Atlanta, GA, for Xerox Corporation; Kent E. Baldaufer and Cecilia Rose Dickson, The Webb Law Firm, of Pittsburgh, PA, for Newegg, Inc., et al.; and David Evan Case, Orrick, Herrington & Sutcliffe LLP, of Minatoku, Tokyo, Japan, for Fujifilm Corporation.

Before MOORE, REYNA, and HUGHES, Circuit Judges.

REYNA, Circuit Judge.

In this appeal, we address the subject matter eligibility of claims in U.S. Patent No. 6,128,415 (“the '415 patent”) directed to a device profile and a method for creating a device profile within a digital image processing system. The district court concluded that the asserted claims were invalid under 35 U.S.C. § 101. For the reasons set forth below, we affirm.

Background

Digitech Image Technologies (“Digitech”) is the assignee of the '415 patent, which is directed to the generation and use of an “improved device profile” that describes spatial and color properties of a device within a digital image processing system. In general, digital image processing involves electronically capturing an image of a scene with a “source device,” such as a digital camera, altering the image in a desired fashion, and transferring the altered image to an “output device,” such as a color printer.

According to the patent, all imaging devices impose some level of distortion on an image's color and spatial properties. This distortion occurs because different devices ( i.e., digital cameras, monitors, TVs, printers, etc.) allow for slightly different ranges of colors and spatial information to be displayed or reproduced. Prior art methods attempted to correct these distortions using certain device dependent solutions and device independent paradigms. Device dependent solutions work to calibrate and modify the color and spatial properties of the devices themselves. For example, some devices may be designed with certain upstream or downstream devices in mind to ensure optimal transfer of image data to those devices. Device independent solutions, on the other hand, work to translate an image's pixel data from a device dependent format into an independent color space, which can then be translated to any number of output devices at a reduced level of distortion.

Device independent solutions discussed in the patent were limited to color information and require creating “device profiles” that describe the color properties of both the source and output devices, thereby enabling a more accurate translation of the image's pixel data into the independent color space and across the source and output devices. The '415 patent expands this device independent paradigm to capture both spatial properties and color properties of an imaging device. The '415 patent thus discloses an “improved device profile” that “includes both chromatic characteristic information and spatial characteristic information.” '415 patent, col. 2, ll. 16–18.

Digitech filed infringement suits against 32 defendants in the U.S. District Court for the Central District of California, asserting claims 1–6, 9, and 26–31 of the '415 patent directed to a “device profile,” and claims 10–15 of the '415 patent directed to methods for generating a “device profile.” On July 3, 2013, several defendants filed summary judgment motions seeking to invalidate the asserted claims of the '415 patent under 35 U.S.C. § 101. On July 31, 2013, the district court granted the defendants' motions and found that all of the asserted claims were subject matter ineligible. The district court found that the “device profile” claims are directed to a collection of numerical data that lacks a physical component or physical manifestation. The district court thus concluded that a “device profile” is nothing more than information and does not fall within one of the categories of eligible subject matter under section 101. The district court further concluded that the asserted method claims for generating a device profile encompass the abstract idea of organizing data through mathematical correlations. The district court thus concluded that the asserted method claims were also ineligible under section 101.

On appeal, Digitech asks us to reverse the district court's findings for two reasons. First, Digitech asserts that the district court erred in finding that the device profile claims are directed to a collection of data that lacks tangible or physical properties. Second, Digitech argues that the district court erred in finding that the asserted method claims encompass an abstract idea and are not tied to a specific machine or apparatus. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

We review the grant of summary judgment under the law of the regional circuit. Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376, 1378 (Fed.Cir.2013). The Ninth Circuit reviews the grant or denial of summary judgment de novo. Leever v. Carson City, 360 F.3d 1014, 1017 (9th Cir.2009). We also review de novo the question of whether a claim is valid under section 101. In re Nuijten, 500 F.3d 1346, 1352 (Fed.Cir.2007).

I. Device Profile Claims

Digitech argues on appeal that the “device profile” claimed in the '415 patent is eligible subject matter under section 101 because it is a tangible object that is an “integral part of the design and calibration of a processor device within a digital image processing system.” Appellant Br. 20 (emphasis omitted). We disagree.

Pursuant to section 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. For all categories except process claims, the eligible subject matter must exist in some physical or tangible form. To qualify as a machine under section 101, the claimed invention must be a “concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570, 1 Wall. 531, 17 L.Ed. 650 (1863). To qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles. Id.

Here, the device profile described in the '415 patent is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter. Independent claims 1 and 26 describe a device profile as a collection of information; specifically, a description of a device dependent transformation of spatial and color information:

1. A device profile for describing properties of a device in a digital image reproduction system to capture,...