Federal Circuit rules against Acacia subsidiary in case over 'device profile' patent

By Jessica M. Karmasek | Jul 17, 2014

WASHINGTON (Legal Newsline) - The U.S. Court of Appeals for the Federal Circuit ruled last week that a device profile patent asserted by the subsidiary of one of the country's leading licensing companies is invalid.

In Digitech Image Technologies LLC v. Electronics For Imaging Inc., the Federal Circuit -- the court charged with handling all U.S. patent appeals -- affirmed the decision of the U.S. District Court for the Central District of California.

Digitech, a subsidiary of Acacia Research Corp., filed a patent infringement lawsuit in August 2012 against EFI, some of its partners and others.

Last year, the district court invalidated the patent at issue -- U.S. Patent No. 6,128,415. The '415 patent is directed to the generation and use of an "improved device profile" that describes spatial and color properties of a device within a digital image processing system.

In general, digital image processing involves electronically capturing an image of a scene with a "source device," such as a digital camera, then altering the image in a desired fashion and transferring that image to an "output device," such as a color printer.

The district court concluded that a "device profile" is nothing more than information and does not fall within one of the categories of eligible subject matter. It also concluded that the asserted method claims for generating a device profile encompass the abstract idea of organizing data through mathematical correlations.

Thus, the court ruled, the asserted method claims were ineligible.

Digitech appealed the district court's decision, asking the Federal Circuit to reverse.

"The device profile, as claimed, is a collection of intangible color and spatial information," Judge Jimmie V. Reyna wrote in the Federal Circuit's July 11 opinion, siding with EFI and 31 other companies.

Reyna continued in the 13-page ruling, "The above claim recites a process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information -- i.e. measured chromatic stimuli, spatial stimuli, and device response characteristic functions -- and organizing this information into a new form.

"The above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device."

The three-judge panel -- judges Kimberly A. Moore and Todd M. Hughes joined Reyna in the decision -- said without additional limitations, a process that employs mathematical algorithms to "manipulate existing information to generate additional information" is not patent eligible.

EFI General Counsel Bryan Ko called the court's ruling a "key victory" for the company and others battling "patent trolls" such as Digitech.

Generally speaking, patent trolls -- sometimes referred to as "bad actors" -- are those patent assertion entities or non-practicing entities that purchase groups of patents without an intent to market or develop a product and then target other businesses with lawsuits.

"The Federal Circuit's decision confirms what we have maintained from the outset: that the patent is invalid and that EFI and its partners should not have been sued in the first place," he said Tuesday.

EFI said Digitech previously extracted settlements from some companies ahead of the district court's ruling last year; however, the company noted it opposed Digitech's claims from the start.

"We will continue to fight these kinds of meritless lawsuits in as many courts as is necessary to protect ourselves, our partners and our customers," Ko said.

"As we have said before, we will not be bullied into settling abusive lawsuits by patent trolls."

Neither Acacia nor Digitech could not immediately be reached for comment.

From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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