property law

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Copyright 2014 Banner & Witcoff, ltd.

Digitech Image Tech., LLC v. Electronics for Imaging, Inc. 758 F.3d 1344 (Fed. Cir.
2014). Digitech, which owns U.S. Patent No. 6,128,415 directed to a “device profile”
and a method for creating a device profile in a digital image processing system, sued
32 defendants for patent infringement. The district court granted summary judgment
of invalidity of the patent in favor of the defendants, and Digitech appealed.

The structure of the claims was as follows:

1. A device profile for describing properties of a device in a digital image
   reproduction system... comprising:

first data for describing a device dependent transformation of color

information content of the image... and

second data for describing a device dependent transformation of spatial

information content of the image....

10. A method of generating a device profile that describes properties of a device
    in a digital image reproduction system... comprising:

generating first data for describing a device dependent transformation of
color information content of the image...

generating second data for describing a device dependent transformation of
spatial information content of the image... and

combining said first and second data into the device profile.

The district court ruled that the “device profile” claims were directed merely to a
collection of numerical data lacking any physical component or physical
manifestation, and thus it did not fall within one of the four statutory categories of
patent-eligible subject matter under 35 U.S.C. § 101. The court also ruled that the
method claims were invalid because they were directed to the abstract idea of
organizing data through mathematical correlations.

The Federal Circuit affirmed. As to the “device profile” claims, the Federal Circuit
explained that “For all categories except process claims, the eligible subject matter
must exist in some physical or tangible form” and that to qualify as a machine, the
claimed invention must be “a concrete thing, consisting of parts, or of certain devices
and combination of devices” (quoting Burr v. Duryee, 68 U.S. 531 (1863)). Because
the “device profile” claims did not include anything tangible, they were not eligible
for patent protection and thus the claims were invalid.

As to the method claims, the Federal Circuit cited the Supreme Court’s recent