Contour IP Holding LLC v. GoPro, Inc., Nos. 2022-1654, -1691 (Fed. Cir. (N.D. Cal.) Sept. 9., 2024). Opinion by Reyna, joined by Prost and Schall.
Contour filed two suits against GoPro asserting infringement of two related patents directed to portable point-of-view (POV) video cameras. After five years of litigation, GoPro moved for summary judgment on the ground that the patent claims are directed to ineligible subject matter under 35 U.S.C. § 101. The district court agreed with GoPro and granted the motion.
Applying the two-step Alice test, the district court determined at step one that the claims are directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.” At Alice step two, the court concluded that the claims recite only functional, results-oriented language with “no indication that the physical components are behaving in any way other than their basic, generic tasks.” Contour appealed.
The Federal Circuit reversed and remanded, ruling that, “when read as a whole,” the claims are “directed to a specific means that improves the relevant technology.” The claims “require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.”
The Federal Circuit explained that the district court “characterize[d] the claims at an impermissibly high level of generality”—an approach that “all but ensures that the exceptions to § 101 swallow the rule.” Addressing GoPro’s argument that a representative claim simply employs known or conventional components that existed in the prior art at the time of the invention, the Federal Circuit stated: “Even so, that alone does not necessarily mean that the claim is directed to an abstract idea at step one.”
In the end, the court ruled that the claims “are directed to a technological solution to a technological problem” and therefore recite patent-eligible subject matter at Alice step one. The court thus reversed and remanded without needing to proceed to the second step of the Alice inquiry.