Imagine That IP Law Blog

The case of Contour IP Holding LLC v. GoPro, Inc. is the first time since October 2021’s Cosmokey Sols. GMBH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091  where the U.S. Court of Appeals for the Federal Circuit has reversed a district court holding of ineligibility under 35 U.S.C. § 101. Accordingly, the Federal Circuit’s September 9, 2024 decision provides valuable insights into how patent eligibility is assessed, particularly for innovations related to video technology.

Background of the Case
Contour IP Holding LLC (“Contour”) filed suit against GoPro, Inc. (“GoPro”) for patent infringement, claiming that several of GoPro’s point-of-view (POV) digital cameras infringed Contour’s U.S. Patent Nos. 8,890,954 and 8,896,694. The patents in question pertain to hands-free action sports cameras that enable the wireless transmission of real-time video to remote devices, such as smartphones. The innovation at issue allows users to view, adjust, and control their recordings while simultaneously saving high-quality footage for later use.

GoPro filed a motion for summary judgment, arguing that the patent claims asserted by Contour were ineligible under Section 101 of the Patent Act, which excludes abstract ideas from patent protection. The district court ruled in favor of GoPro, finding the patents ineligible. However, the Federal Circuit reversed this decision on appeal, finding that Contour’s claims were patent-eligible, and remanded the case for further proceedings.

Technology at Issue
The patents at the center of the dispute involve a technological advancement in POV cameras. Contour’s technology enables these cameras to simultaneously generate two video streams: one high-quality stream saved locally on the camera for future use and a lower-quality stream transmitted wirelessly to a remote device for real-time viewing and control. This dual-streaming feature was designed to address bandwidth limitations in real-time video transmission, providing users with real-time control and high-quality footage for post-activity viewing.

The critical question in the case was whether Contour’s patent claims merely recited an abstract idea, such as transmitting video data, or whether the claims described a specific technological improvement that could be patented under Section 101.

The Alice Test and Patent Eligibility
In analyzing the patent eligibility of Contour’s claims, the courts applied the two-step test established in Alice Corp. Pty. Ltd. v. CLS Bank International:

Step 1: Determine whether the claims are directed to a patent-ineligible concept, such as an abstract idea.

Step 2: If so, assess whether the claims include an “inventive concept” sufficient to transform the abstract idea into a patent-eligible invention.

The district court, at the summary judgment stage, concluded that the claims were directed to the abstract idea of “creating and transmitting video at two different resolutions and adjusting video settings remotely.” As a result, the court ruled that the claims were patent-ineligible under Alice Step 1.

However, the Federal Circuit disagreed with the district court’s characterization and reversed the ruling.

The Federal Circuit’s Analysis
The Federal Circuit’s analysis centered on Alice Step 1—whether Contour’s claims were directed to a patent-ineligible abstract idea or a specific, technological improvement. In this case, the court determined that the district court had incorrectly characterized Contour’s claims at too high a level of abstraction. Specifically, the Federal Circuit observed that “the district court’s conclusion that the claims were ‘directed to a result or effect that itself is the abstract idea’ disregards the disclosed technological means for obtaining a technological result.” Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825, *13. Instead, the court concluded that the claims were directed to a specific technological improvement rather than merely describing a general method for transmitting video. The Federal Circuit emphasized that the combination of elements in Contour’s claims—parallel recording of high-quality and low-quality video streams, along with the wireless transmission of the lower-quality stream for real-time adjustments—represented a specific solution to a technological problem. In reaching this conclusion, the court looked at the specification and observed that “[t]he written description discloses improving POV camera technology through specific means of generating high-and low-quality video streams in parallel and transferring a low-quality video stream to a remote device, and the claims reflect this improvement”. Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825, *16 Accordingly, the court deemed this improvement over prior art sufficient to classify the claims as patent-eligible.

The court found that the patented technology allowed for real-time video adjustments and control, solving the problem of wireless bandwidth limitations without sacrificing high-quality footage. The court also noted that the claims were not directed to abstract results or effects but to a specific process for achieving those results, which is key to passing Alice Step 1.

Implications for Patent Law
The decision in Contour v. GoPro highlights the challenges faced when applying the Alice framework to patents involving digital and software innovations. This case demonstrates that even if a patent involves known components, such as cameras and wireless technology, it can still be patent-eligible if it offers a specific, innovative solution to a technological problem.

For patent applicants and practitioners, the ruling underscores the importance of carefully drafting claims and specifications to highlight the specific technological improvements made by an invention. Claims that focus on a concrete technological solution, rather than broad abstract concepts, are more likely to survive challenges under Section 101.

Conclusion
The Federal Circuit’s decision in Contour IP Holding LLC v. GoPro, Inc. reinforces the principle that patent claims directed to specific technological improvements can be patentable under Section 101. By reversing the district court’s finding of patent ineligibility, the court reaffirmed that claims describing a particular method of solving a technological problem—such as Contour’s dual-stream recording and wireless transmission system—can be eligible for patent protection.