Matching a captured image to stored features is abstract, and the patentee must argue each claim or lose it as represented

2024-08-06Fed. Cir.

Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280 (Fed. Cir. Aug. 6, 2024) (precedential) (Stark, J., joined by Lourie and Bryson, JJ.), No. 2022-2216, affirming the United States District Court for the Central District of California, No. 2:21-cv-06926-GW-PD (Wu, J.)

United States Patent Nos. 10,445,618 and 10,776,658, both titled "Storing Information for Access Using a Captured Image," claim receiving user-defined information at a third-party server, associating it with a portion of a first image, and providing access to a second party when a second image captured by that party "includes a portion corresponding to at least the first portion of the first image." Claim 11 of the '618 patent adds extracting "interest points" from both images and matching them; the '658 patent adds the second image's capture location. The district court dismissed with prejudice under Section 101 of Title 35 of the United States Code and denied leave to amend; the Federal Circuit affirmed. The panel held the claims directed to "receiving information, associating information with images, comparing the images, and presenting information based on that comparison," consisting "solely of result-orientated, functional language"; the interest-point claims gave "no specificity as to how the 'interest points' are determined or used," and the specification's own account of interest-point methods, citing Hartley and Zisserman, SIFT and RANSAC, described them as prior art. Teaching in the specification cannot help where it "is not included in the claims." On representative claims, the challenger must show prima facie that the claims are "substantially similar and linked to the same" ineligible concept; the patentee must then present non-frivolous arguments for distinctive limitations or forfeit them.

What it changesComputer vision claimed as capture, extract, match and retrieve is ineligible, and this opinion reaches the feature-matching step directly: naming "interest points" without claiming how they are computed or compared adds nothing, and a specification that credits SIFT and RANSAC to the literature confirms conventionality. A vision or multimodal application should claim the feature extraction or matching technique in operational terms, what is computed from what, under what constraint, producing what representation, and should describe the inventive part of that technique as the applicant's own rather than cite it to a textbook. The representative-claim holding changes litigation and licensing review: for every patent in the portfolio, know now which dependent claims carry a limitation that can be argued as a distinct, non-abstract mechanism, because the owner who cannot make that argument in the opposition brief loses every claim in the patent on one motion, with prejudice, and may not get leave to amend. The decision is precedential and reaches every claim of both patents.

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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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