IP Law Daily, PATENT—E.D. Mo.: Apple wins dismissal of ‘Memoji’ patent dispute, (Mar 20, 2023)

By Kevin M. Finson

A patent claiming selection of emojis based on the user's facial expression was directed at an abstract idea.

Apple showed there was no genuine dispute of material fact that a patent directed at sending and receiving dynamic emoticons asserted against Apple’s “Memoji” feature was unpatentable as directed to an abstract idea, the U.S. District Court in St. Louis has held. The patent claims described a goal in conclusory terms with no instruction of how it could be achieved except by the application of generic computer components (FacetoFace Biometrics, Inc. v. Apple, Inc., March 17, 2023, Perry, C.).

FacetoFace Biometrics, Inc. (FacetoFace) was the owner of U.S. Patent No. 11,042,623 (the ’623 patent), which was directed at sending and receiving dynamic emoticons. FacetoFace brought suit against Apple, Inc. (Apple) for induced and contributory infringement, alleging that Apple’s “Memoji” feature, which allowed users to send an emoji based on what the user’s device camera showed of the user’s facial expression. Apple moved to dismiss on the ground that the ’623 patent was invalid for being directed at an abstract idea. FacetoFace responded with a declaration from its expert, so the court converted the motion to one for summary judgment, requested additional briefing, and applied the two-step Alice test.

Abstract idea. Apple argued that the asserted patent was invalid because it recited only functional, results-oriented steps to generate, process, and transmit information using well-known, off the shelf technology. FacetoFace argued that its patent claimed improvement in computer technology, citing news coverage that Apple’s product had received calling it new and innovative.

The court reviewed the patent language and the patentability opinion presented by FacetoFace’s expert and found both were conclusory and only recited use of generic computer components, without any algorithms or other instructions on how the goals described in the patent could be achieved. The goals were clearly abstract, and the patent did not contain any particular arrangement of steps or method that would save patentability on step two of the Alice test.

The court granted the motion to dismiss.

The Case is No. 4:22-cv-00429-CDP.

Attorneys: Anthony G. Simon (Simon Law Firm PC) for FacetoFace Biometrics, Inc. B. Trent Webb (Shook Hardy LLP) for Apple, Inc.

Companies: FacetoFace Biometrics, Inc.; Apple, Inc.

Cases: Patent MissouriNews