United States Court of Appeals
for the Federal Circuit
______________________
RECOGNICORP, LLC,
Plaintiff-Appellant
v.
NINTENDO CO., LTD., NINTENDO OF AMERICA,
INC.,
Defendants-Appellees
______________________
2016-1499
______________________
Appeal from the United States District Court for the
Western District of Washington in No. 2:12-cv-01873-
RAJ, Judge Richard A. Jones.
______________________
Decided: April 28, 2017
______________________
JONATHAN DANIEL BAKER, Farney Daniels PC, San
Mateo, CA, argued for plaintiff-appellant. Also represent-
ed by DAVID P. SWENSON, Minneapolis, MN.
MARK S. PARRIS, Orrick, Herrington & Sutcliffe LLP,
Seattle, WA, argued for defendants-appellees. Also repre-
sented by DONALD E. DAYBELL, Irvine, CA; MARC SHAPIRO,
New York, NY; WILL MELEHANI, San Francisco, CA.
______________________
Before LOURIE, REYNA, and STOLL, Circuit Judges.
2 RECOGNICORP, LLC V. NINTENDO CO., LTD.
REYNA, Circuit Judge.
RecogniCorp sued Nintendo for patent infringement.
The district court found that RecogniCorp’s patent claims
ineligible subject matter and, based on that finding,
granted Nintendo’s motion for judgment on the pleadings.
RecogniCorp appeals. The patent’s claims are directed to
the abstract idea of encoding and decoding image data,
and the claims do not contain an inventive concept suffi-
cient to render the patent eligible. Therefore, we affirm.
BACKGROUND
1. The ’303 Patent
U.S. Patent No. 8,005,303 (“’303 patent”) patent is en-
titled “Method and Apparatus for Encoding/Decoding
Image Data.” J.A. 17. It teaches a method and apparatus
for building a composite facial image using constituent
parts. See, e.g., J.A. 27 (col. 1 ll. 30–56 and col. 2 ll. 19–
28); J.A. 28 (col. 4 ll. 35–45).
Prior to the invention disclosed in the ’303 patent,
composite facial images typically were stored in file
formats such as “bitmap,” “gif,” or “jpeg.” But these file
formats required significant memory, and compressing
the images often resulted in decreased image quality.
Digital transmission of these images could be difficult.
The ’303 patent sought to solve this problem by encoding
the image at one end through a variety of image classes
that required less memory and bandwidth, and at the
other end decoding the images.
RECOGNICORP, LLC V. NINTENDO CO., LTD. 3
For purposes of this appeal, we find amended claim 1
to be representative. 1 It recites:
1. A method for creating a composite image, com-
prising:
displaying facial feature images on a first area of
a first display via a first device associated
with the first display, wherein the facial fea-
ture images are associated with facial feature
element codes;
selecting a facial feature image from the first area
of the first display via a user interface associ-
ated with the first device, wherein the first
device incorporates the selected facial feature
image into a composite image on a second area
of the first display, wherein the composite im-
age is associated with a composite facial im-
age code having at least a facial feature
element code and wherein the composite facial
image code is derived by performing at least
one multiplication operation on a facial code
using one or more code factors as input pa-
rameters to the multiplication operation; and
reproducing the composite image on a second dis-
play based on the composite facial image code.
J.A. 35 (US 8,005,303 C1, col. 1 ll. 23–40) (Reexamination
Certificate for ’303 patent)).
1 RecogniCorp argued before the district court that
“each asserted claim must be analyzed separately.” J.A. 3
n.1. RecogniCorp does not maintain this argument on
appeal; it therefore is waived. SmithKline Beecham Corp.
v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006). We
discuss limitations of other claims where appropriate.
4 RECOGNICORP, LLC V. NINTENDO CO., LTD.
2. District Court Litigation and Reexamination
The ’303 patent issued on August 23, 2011. J.A. 17.
It later was assigned to RecogniCorp, LLC (“Recog-
niCorp”). In 2012, RecogniCorp filed suit in the United
States District Court for the District of Oregon against
Nintendo Co., Ltd. and Nintendo of America, Inc. (togeth-
er, “Nintendo”) for infringement of several claims of the
’303 patent. J.A. 49, 196. In 2012, the case was trans-
ferred to the United States District Court for the Western
District of Washington.
The district court stayed the case in 2013 pending a
reexamination by the United States Patent and Trade-
mark Office (“PTO”). The reexamination focused on
obviousness and resulted in several amended claims,
including claim 1. See J.A. 35. The amended claims all
contain similar language regarding multiplication opera-
tions. Specifically, the limitation “wherein the composite
facial image code is derived by performing at least one
multiplication operation on a facial code using one or
more code factors as input parameters to the multiplica-
tion operation” (or a limitation substantially identical)
was added to the independent claims. J.A. 4. In light of
these amendments, the PTO issued a reexamination
certificate for the ’303 patent. Upon completion of the
reexamination in 2014, the district court lifted the stay.
In March 2015, Nintendo filed a motion for judgment
on the pleadings, asserting that the claims were ineligible
under 35 U.S.C. § 101. Section 101 provides that
“[w]hoever invents or discovers any new and useful pro-
cess, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a
patent therefor . . . .” There is an exception to that gen-
eral principle: subject matter directed to laws of nature,
natural phenomena, or abstract ideas is not patent-
eligible. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347,
2354 (2014). The Supreme Court has established a two-
RECOGNICORP, LLC V. NINTENDO CO., LTD. 5
step test to determine whether patent claims are directed
to ineligible subject matter. In the first step, “we deter-
mine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Id. at 2355. If the
answer in step one is yes, “we then ask, ‘[w]hat else is
there in the claims before us?’” Id. (quoting Mayo Collab-
orative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1297 (2012)). In other words, step two asks whether the
patent claims an “‘inventive concept’ sufficient to ‘trans-
form’ the claimed abstract idea into a patent-eligible
application.” Id. at 2357 (quoting Mayo, 132 S. Ct. at
1294, 1298).
In December 2015, without issuing a claim construc-
tion ruling, the district court granted Nintendo’s motion.
At Alice step one, the district court concluded that the
asserted claims are “directed to the abstract idea of encod-
ing and decoding composite facial images using a mathe-
matical formula.” J.A. 8. According to the district court:
[The claims] boil down to: (1) displaying potential
input variables (the facial features and their mod-
ifications), (2) selecting and manipulating the in-
puts, (3) deriving an output code by performing a
“multiplication operation” on the inputs, and
(4) outputting the original inputs on another de-
vice by performing the sequence in reverse on an-
other device.
J.A. 8. The district court analogized the process to “paint
by numbers.” J.A. 8.
At Alice step two, the district court found that the
’303 patent contains no inventive concept. J.A. 11. It
stated that “the entirety of the ’303 Patent consists of the
encoding algorithm itself or purely conventional or obvi-
ous pre-solution activity and post-solution activity insuffi-
cient to transform the unpatentable abstract idea into a
patent-eligible application.” J.A. 14 (quotation marks,
citations, and alterations omitted). Based on these find-
6 RECOGNICORP, LLC V. NINTENDO CO., LTD.
ings, the district court granted Nintendo’s motion for
judgment on the pleadings.
RecogniCorp timely appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
DISCUSSION
1. Standard of Review
We review procedural aspects of motions for judgment
on the pleadings using regional circuit law, which in this
case is the Ninth Circuit. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016).
The Ninth Circuit reviews motions for judgment on the
pleadings de novo. Enron Oil Trading & Transp. Co.
v. Walbrook Ins. Co., 132 F.3d 526, 528 (9th Cir. 1997).
We review § 101 patent eligibility determinations de novo.
McRO, 837 F.3d at 1311.
2. Analysis
A. Alice Step One
Under the first step of Alice, we decide whether the
claims are directed to ineligible subject matter, such as an
abstract idea. McRO, 837 F.3d at 1312; Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015). The inquiry often is whether the claims are
directed to “a specific means or method” for improving
technology or whether they are simply directed to an
abstract end-result. McRO, 837 F.3d at 1314. If the
claims are not directed to an abstract idea, the inquiry
ends. Thales Visionix Inc. v. United States, 850 F.3d
1343, 1349 (Fed. Cir. 2017).
While “generalized steps to be performed on a com-
puter using conventional computer activity” are abstract,
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed.
Cir. 2016), not all claims in all software patents are
necessarily directed to an abstract idea, Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). For
RECOGNICORP, LLC V. NINTENDO CO., LTD. 7
example, we have held that software patent claims satisfy
Alice step one when they are “directed to a specific im-
plementation of a solution to a problem in the software
arts,” such as an improvement in the functioning of a
computer. Enfish, 822 F.3d at 1338–39.
We find that claim 1 is directed to the abstract idea of
encoding and decoding image data. It claims a method
whereby a user displays images on a first display, assigns
image codes to the images through an interface using a
mathematical formula, and then reproduces the image
based on the codes. See J.A. 35 (col. 1 ll. 23–40). This
method reflects standard encoding and decoding, an
abstract concept long utilized to transmit information. Cf.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340–41 (Fed. Cir. 2017) (organizing, display-
ing, and manipulating data encoded for human- and
machine-readability is directed to an abstract concept).
Morse code, ordering food at a fast food restaurant via a
numbering system, and Paul Revere’s “one if by land, two
if by sea” signaling system all exemplify encoding at one
end and decoding at the other end. Even the ’303 patent
describes “a common technique for synthesizing single
images of faces involv[ing] horizontally dividing the image
of a face into bands for different features,” such that
“[p]aper strips containing exemplary features [can] then
be combined to form a composite drawing of a face.” J.A.
27 (col. 1 ll. 37–43).
RecogniCorp invokes Diamond v. Diehr, 450 U.S. 175
(1981), to support its argument that claiming the use of a
mathematical formula does not necessarily render a
patent ineligible. RecogniCorp is correct. In Diehr, the
Supreme Court held that despite a method claim’s recita-
tion of a mathematical formula, “a physical and chemical
process for molding precision synthetic rubber products
falls within the § 101 categories of possibly patentable
subject matter.” Id. at 184. In confirming patentability,
the Supreme Court focused not on the presence of a
8 RECOGNICORP, LLC V. NINTENDO CO., LTD.
mathematical formula but on the subject matter of the
claims as a whole. Id. at 192 (“[A] claim containing a
mathematical formula” satisfies § 101 when it “imple-
ments or applies that formula in a structure or process
which, when considered as a whole, is performing a func-
tion which the patent laws were designed to protect.”).
Here, the relevant inquiry does not turn one way or the
other just on claim 1’s use of multiplication. See J.A. 35
(’303 Reexamination Certificate, col. 1 ll. 34–38). Rather,
the focus is on the claim as a whole. Diehr is distinguish-
able because, outside of the math, claim 1 of the ’303
patent is not directed to otherwise eligible subject matter.
Adding one abstract idea (math) to another abstract idea
(encoding and decoding) does not render the claim non-
abstract.
RecogniCorp argues that, as in Enfish, “the district
court mischaracterized the invention using an improperly
high level of abstraction that ignored the particular
encoding process recited by the claims.” Appellant’s Op.
Br. 11. In Enfish, we warned that “describing the claims
at such a high level of abstraction and untethered from
the language of the claims all but ensures that the excep-
tions to § 101 swallow the rule.” 822 F.3d at 1337. But
the district court did not make that mistake regarding the
’303 patent. The claims of the ’303 patent are clearly
directed to encoding and decoding image data. Unlike
Enfish, claim 1 does not claim a software method that
improves the functioning of a computer. See id. It claims
a “process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Id. at 1336.
This case is similar to Digitech Image Technologies,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014). There, the claims of the challenged patent
were directed to the abstract idea of organizing infor-
mation through mathematical correlations. Id. at 1350–
51. We explained that the claim at issue “recites a pro-
cess of taking two data sets and combining them into a
RECOGNICORP, LLC V. NINTENDO CO., LTD. 9
single data set” simply by organizing existing data into a
new form. Id. at 1351. A process that started with data,
added an algorithm, and ended with a new form of data
was directed to an abstract idea. Id. In this case, the ’303
patent claims a method whereby a user starts with data,
codes that data using “at least one multiplication opera-
tion,” and ends with a new form of data. We discern no
material difference between the Alice step one analysis in
Digitech and the analysis here.
We proceed to the second step of Alice because the
’303 patent claims are directed to an abstract idea.
B. Alice Step Two
In step two of the Alice inquiry, we search for an “‘in-
ventive concept’ sufficient to ‘transform the nature of the
claim into a patent-eligible application.’” McRO, 837 F.3d
at 1312 (quoting Alice, 134 S. Ct. at 2355). To save a
patent at step two, an inventive concept must be evident
in the claims. See Alice, 134 S. Ct. at 2357 (“[W]e must
examine the elements of the claim to determine whether it
contains an ‘inventive concept.’” (emphasis added));
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus on
the language of the Asserted Claims themselves.”).
RecogniCorp argues that the claims of the ’303 patent
contain an inventive concept sufficient to render them
patent-eligible. Specifically, it contends that the combina-
tion of claim elements, i.e., the “particular encoding
process using the specific algorithm disclosed” in the
patent “transforms” the abstract idea into a patentable
invention. RecogniCorp also points out the “facial feature
element codes” and “pictorial entity symbols” disclosed in
the ’303 patent claims. We find that these claim elements
do not transform the nature of the ’303 patent claims into
a patent-eligible application. McRO, 837 F.3d at 1312.
10 RECOGNICORP, LLC V. NINTENDO CO., LTD.
In DDR Holdings, LLC v. Hotels.com, L.P., we found
that the patent claims satisfied Alice step two because
“the claimed solution amounts to an inventive concept for
resolving [a] particular Internet-centric problem.” 773
F.3d 1245, 1259 (Fed. Cir. 2014). Claim 1 of the ’303
patent contains no similar inventive concept. Nothing
“transforms” the abstract idea of encoding and decoding
into patent-eligible subject matter. Alice, 134 S. Ct. at
2357. Nor does the presence of a mathematical formula
dictate otherwise. Claims that are directed to a non-
abstract idea are not rendered abstract simply because
they use a mathematical formula. Diehr, 450 U.S. at 187.
But the converse is also true: A claim directed to an
abstract idea does not automatically become eligible
merely by adding a mathematical formula. See, e.g.,
Clarilogic, Inc. v. FormFree Holdings Corp., __ F. App’x
__, 2017 WL 992528, at *3 (Fed. Cir. Mar. 15, 2017). As
we explained above, claim 1 is directed to the abstract
idea of encoding and decoding. The addition of a mathe-
matical equation that simply changes the data into other
forms of data cannot save it.
In BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, the patent owner “alleged that an inventive
concept can be found in the ordered combination of claim
limitations that transform the abstract idea of filtering
content into a particular, practical application of that
abstract idea.” 827 F.3d 1341, 1352 (Fed. Cir. 2016). We
found the allegation sufficient to survive a motion to
dismiss, where all facts had to be construed in the patent
owner’s favor. Id. Here, RecogniCorp has not alleged a
particularized application of encoding and decoding image
data. Indeed, claim 1 does not even require a computer;
the invention can be practiced verbally or with a tele-
phone. J.A. 28 (col. 4 ll. 59–63); J.A. 32 (col. 11 ll. 53–59).
Independent claim 36 claims the use of a computer, but it
does exactly what we have warned it may not: tell a user
to take an abstract idea and apply it with a computer.
RECOGNICORP, LLC V. NINTENDO CO., LTD. 11
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1332 (Fed. Cir. 2015).
In sum, the claims of the ’303 patent lack an inventive
concept that transforms the claimed subject matter from
an abstract idea into a patent-eligible application. Alice,
134 S. Ct. at 2357.
CONCLUSION
The claims of the ’303 patent are directed to encoding
and decoding image data, an abstract idea. The claims
provide no inventive concept to render them eligible under
§ 101. We therefore affirm the district court’s grant of
Nintendo’s motion for judgment on the pleadings.
AFFIRMED
COSTS
No costs.