Creating views on the fly from stored data is abstract when the claim never says how the views are created

2024-04-04Fed. Cir.

AI Visualize, Inc. v. Nuance Communications, Inc., 97 F.4th 1371 (Fed. Cir. Apr. 4, 2024) (precedential) (Reyna, J., joined by Moore, C.J., and Hughes, J.), No. 2022-2109, affirming AI Visualize, Inc. v. Nuance Communications, Inc., 610 F. Supp. 3d 638 (D. Del. 2022) (Andrews, J.)

United States Patent Nos. 8,701,167, 9,106,609, 9,438,667 and 10,930,397, which share a specification, claim systems for viewing three-dimensional virtual views of a stored volume visualization dataset, such as a set of MRI scans, at a remote client without transmitting the whole dataset. Representative claim 1 of the '609 patent recites a web application that accepts a request for virtual views, determines which frames are stored locally, requests the missing frames from a server that creates them from the dataset, and displays the frames in sequence; other claim groups add a key for previously requested views or send low-quality frames first. The District of Delaware dismissed the complaint under Rule 12(b)(6) for ineligibility under Section 101 of Title 35 of the United States Code, and the Federal Circuit affirmed in an opinion by Judge Reyna. At step one the claims are directed to "converting data and using computers to collect, manipulate, and display the data"; creating a view from the existing dataset, recited in general terms, is abstract data manipulation, and "[t]here is no recitation in the claim about how to create frames or virtual views." The panel refused to import the specification's description of frame selection. At step two the specification itself said three-dimensional views from two-dimensional scans were already possible, and on-the-fly creation added nothing.

What it changesDespite the company's name, nothing in these claims recites a model, and the decision is a warning for model-serving claims written the same way. A claim that says a server generates the requested output from stored data and sends it to the client, with a cache check and a low-to-high quality sequence, describes the plumbing of most inference services, and it is abstract unless the claim says how the output is created. For applications on generative or rendering systems, the independent claim should recite the operation that produces the output, in terms of the inputs, the transformation and what the client and the server each compute, and the specification should explain why that division of work solves a bandwidth or latency problem. The court treated the absence of that mechanism from the claim as decisive and would not borrow it from the description. The decision is precedential and follows Hawk Technology Systems, LLC v. Castle Retail, LLC.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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