Recording two streams in parallel and sending only the low-quality one is a technological solution, not an abstract idea

2024-09-09Fed. Cir.

Contour IP Holding LLC v. GoPro, Inc., 113 F.4th 1373 (Fed. Cir. Sept. 9, 2024) (precedential) (Reyna, J., joined by Prost and Schall, JJ.), Nos. 2022-1654, 2022-1691, reversing and remanding Contour IP Holding, LLC v. GoPro, Inc., No. 3:17-cv-04738-WHO, 2022 WL 658553 (N.D. Cal. Mar. 4, 2022) (Orrick, J.)

United States Patent No. 8,890,954 and its continuation, United States Patent No. 8,896,694, claim a portable point-of-view video camera. Representative claim 11 recites a lens, an image sensor, a wireless connection protocol device, and a camera processor configured to generate from the sensor data a first image data stream and a second, higher-quality stream, send the first stream to a personal portable computing device for display, and adjust camera settings on control signals from that device. A 2018 claim construction read "generate" as "record in parallel," because Contour had told the Board in inter partes review that parallel generation distinguished prior art that creates the high-resolution stream first and down-converts it. Judge Orrick then granted GoPro summary judgment of ineligibility. The Federal Circuit reversed. Read as a whole, claim 11 is directed to "a specific means that improves the relevant technology": parallel recording with the low-quality stream wirelessly transferred to a remote device, permitting real-time viewing and adjustment "with the elimination of bandwidth limitations on wireless data transfer." Conventional components do not by themselves make a claim abstract; Yu v. Apple Inc. is distinguished because GoPro did not argue the arrangement was a long-known practice, and ChargePoint because the camera can "operate differently than it otherwise could." The claims are eligible at step one, so step two was not reached.

What it changesThe claim won because it recited the specific arrangement that solved a stated technical problem, bandwidth on the wireless link against image quality at the camera, and because claim construction confined "generate" to parallel recording, so the claim did not cover every way of producing two streams. Edge inference systems have the same shape: a small model on the device produces the fast, low-fidelity output that drives the interface or the control loop, a larger model elsewhere produces the full-fidelity result, and the particular split between them is the invention. Draft that split into the independent claim, state the problem it solves in the specification in terms of latency, bandwidth or compute on the device, and avoid claim language that reads on sequential processing or on simply sending data to a server. The opinion also shows what a narrowing statement in inter partes review can do: Contour's distinction of down-conversion limited what the claim covers, and that limit is what carried it through step one.

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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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