IP Law Daily, PATENT—D. Del.: Claims for camera recording/play-back apparatus directed to specific improvements, not abstract idea, (Nov 15, 2018)

By Joseph Arshawsky, J.D.

Claims 1-5 of Maxell, Ltd.’s U.S. Patent No. 8,478,102 ("the ’102 patent") were not directed to the abstract idea of conserving resources or battery life, but rather were focused on an improved camera, according to the federal district court in Wilmington, Delaware. Therefore, the court denied the defendants’ motion for judgment on the pleadings with respect to Maxell’s infringement assertions against camera makers Olympus Corporation and Olympus America Inc. (Olympus Corp. v. Maxell, Ltd., November 14, 2018, Noreika, M.).

The ‘102 patent, titled "Information Recording/Play-Backing Apparatus," was directed to "portable information recording/play-back arrangements, wherein a controller judges whether a mode ... is an imaging mode or a dubbing mode" and the controller controls the source of power for imaging and play-back modules when in imaging mode, and the controller permits dubbing operations when in dubbing mode and the play-back modules operate on external power. Maxell, the patent holder, agreed to a declaratory relief action, and Maxell asserted against Olympus counterclaims for infringement of 10 patents, including the ‘102 patent. On July 7, 2018, Olympus filed the instant motion for judgment on the pleadings alleging that the ‘102 patent was invalid as claiming ineligible subject matter under 35 U.S.C. §101. The court denied the motion.

Olympus argued that claims 1-5 of the ‘102 patent are directed to ineligible subject matter under Section 101, and that under step one of the Alice framework, that the claims were directed to the abstract idea of "conserving limited resources" or, alternatively, "conserving battery power." Maxell argued that the ‘102 patent was not directed to an abstract idea, but to an improvement in the functioning of camera technology, that is, "a video camera with two storage media and a controller that suppresses power to one of those media under certain conditions." Maxell focused on the fact that the claims all require a dual-medium camera, wherein "power management functions" are additional limitations that rendered the camera "feasible and usable." Maxell asserted that the claims required the camera to have a controller that functioned to modify power supply to the storage media when the camera was operating in a specific mode. The court agreed with Maxell that the ‘102 patent claims were directed to an improvement in the functioning of a specific technology—not to an abstract idea that was merely implemented on generic computers or machinery.

"Claim 1 of the ‘102 patent is directed to a specific type of technology—a recording/play-back apparatus—with features designed to improve upon the prior art," said the court. "The relevant problems with prior devices and the claimed solution are disclosed in the patent." The specification described one of the problems with prior art cameras: "in the camera driven by a battery, if both of the HDD and the DVD are driven, the battery consumption becomes great and this is not realistic." The specification also provided: "The video or audio information recording/play-backing apparatus according to the present invention performs control to save power." According to the specification, the claimed invention "can provide an information recording/play-backing device requiring a smaller power consumption," and the "object" of battery conservation "may be achieved by the invention disclosed in the claims." Further, the specification disclosed that the claimed invention used a controller to monitor the device’s mode of operation, and it also detailed how the disclosed controller monitored and differentially suppressed power consumption and operation. Claim 1 required a controller that "judges" the mode the claimed recording/play-back apparatus is operating in and "controls" the apparatus accordingly. The same was true for its dependent claims. The court found that the claims at issue here were like others directed to technological improvements found eligible at Alice step one.

On its face, claim 1 of the ‘102 patent was directed to a "recording/play-back apparatus" that used a controller to monitor and control different modes of operation and power consumption of the apparatus. The patent described battery-consumption problems with prior devices and how the claimed controller improved those devices. Contrary to Olympus’ suggestion, the focus of claim 1 was an improved camera, not a generic improvement in battery (or resource) conservation untethered from any technology. The court addressed the dependent claims and found that none of them were directed to an abstract idea. Because the court found that the claims of the ‘102 patent were not directed to an abstract idea, an analysis under step two of the Alice framework was unnecessary. The court denied Olympus’ motion for judgment on the pleadings.

This case is No. 18-216 (MN).

Attorneys: John W. Shaw (Shaw Keller LLP) and William J. McCabe (Perkins Coie LLP) for Olympus Corp. and Olympus America Inc. Timothy Devlin (Devlin Law Firm LLC) and Jamie B. Beaber (Mayer Brown LLP) for Maxell, Ltd.

Companies: Olympus Corp.; Olympus America Inc.; Maxell, Ltd.

Cases: Patent DelawareNews