FullView, Inc. v. Polycom, Inc.

Background

FullView alleged that Polycom infringed FullView’s ’711 and ’143 Patents. The patents concern panoramic viewing systems and composite images made from multiple camera views. FullView asserted 18 claims from the ’711 Patent and also asserted claims from the ’143 Patent. Polycom’s motion challenged the ’711 Patent.

FullView had licensed both patents to Polycom in 2011, allowing Polycom to manufacture its CX5000 360-degree video-conferencing camera. FullView alleged that Polycom ended the agreement earlier than allowed by its 90-day notice provision and later continued selling the CX5000 without reporting those sales or paying royalties.

The Patent Trial and Appeal Board upheld the ’711 Patent’s claims against Polycom’s challenge, and the Federal Circuit affirmed that decision on the issue of obviousness. The district court explained that those earlier rulings concerned novelty and obviousness, not whether the claims covered patent-eligible subject matter under Section 101.

Legal standard

The court applied Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not plausibly state a legal claim for relief. The court also held that patent-eligibility issues can be decided at this stage when the complaint’s allegations do not prevent resolving eligibility as a matter of law.

Under Section 101 of the Patent Act, patents may cover a new and useful process, machine, manufacture, composition of matter, or improvement of one of those categories. The court also applied the two-step test from Alice Corp. v. CLS Bank: first, determine whether the claims are directed to an abstract idea; second, determine whether they contain an inventive concept that transforms that idea into patent-eligible subject matter.

Section 101 eligibility

Polycom argued that the Composite Image Claims—Claim 25 and its dependent claims—did not fit any statutory category because they were broad enough to cover intangible images. FullView argued that an image produced on photographic material or an electronic display was a tangible “manufacture.”

The court rejected that argument. It concluded that the claims were broad enough to cover intangible images, including mental images and optical counterparts produced by a lens, mirror, or electronic device. Relying on Federal Circuit decisions, the court stated that a “manufacture” must be a tangible article or commodity and that a claim covering both eligible and ineligible embodiments is not eligible for patenting.

The court therefore granted Polycom’s motion to dismiss the Composite Image Claims as patent-ineligible under Section 101.

Abstract idea and inventive concept

The court separately concluded that all asserted claims of the ’711 Patent were directed to the abstract idea of combining multiple pictures to create a larger, seamless picture. The court compared the claims to decisions involving the creation of composite facial images and the combination of multiple photographs to improve an image.

The court found no inventive concept beyond that abstract idea. FullView relied on the Federal Circuit’s earlier finding that the patent was not obvious, but the court explained that novelty and obviousness are separate from eligibility under Section 101. The court concluded that the claimed arrangement of cameras, sensors, mirrors, and reflective areas amounted to geometry and used well-known or generic components. It also found that the Federal Circuit’s decision in Thales Visionix Inc. v. United States did not change the result because that case did not reach the second step of the eligibility test.

Ruling

The court granted Polycom’s motion to dismiss without prejudice because the Composite Image Claims did not qualify as a statutory patent category and because the ’711 Patent claims were directed to an abstract idea without an inventive concept. The court stated that the dismissal was without prejudice to FullView amending its pleading in a way consistent with the order.

The court also granted without prejudice Polycom’s motion to dismiss based on the abstract-idea and lack-of-inventive-concept analysis. Polycom’s request to dismiss FullView’s claim under 35 U.S.C. § 271(g) for insufficient factual allegations was moot. The order disposed of Docket No. 80.