"[Plotagraph argued] that its patent claims included sets of rules similar to those conferring eligibility to McRO's software patent claims."

Yesterday, the U.S. Supreme Court issued an order list indicating that it had denied yet another petition for writ of certiorari seeking clarity on the patent eligibility of claims covering improvements to computer technologies under 35 U.S.C. § 101. The petition, filed by digital photography innovator Plotagraph, had argued against both the abstract idea determination under Federal Circuit case law on technological improvements to computer animations, as well as the district court's early determination of validity at the motion to dismiss stage.

Plotagraph had asserted claims from a series of five U.S. patents against Lightricks in the Southern District of Texas. Those patents covered various systems and computer programs designed to automate the shifting of pixels within digital photography files to create the simulation of movement when viewed. The asserted patent claims generally recited the computer products for automated pixel shifting, a series of user-initiated preparatory steps including selection of a photo portion, and a final pixel-shifting step.

Before filing an answer to Plotagraph's complaint, Lightricks filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim, alleging the patent-ineligibility of Plotagraph's claims under Section 101. Comparing the claimed pixel-shifting invention to digital animation, the district court granted Lightricks' motion to dismiss after finding that the claims were directed to an abstract idea without a patent-eligible inventive concept. This January, the U.S. Court of Appeals for the Federal Circuit affirmed, finding that the district court properly applied the two-step patent eligibility test under Alice Inc. v. CLS Bank International and that the claims' failure to mention "animation" or "illusion of movement" was immaterial to the eligibility analysis.

Plotagraph filed its petition for writ this June, arguing that the district and appellate courts had both overgeneralized the nature of its patent claims as an abstract idea that could be performed with pen and paper. As such, Plotagraph had argued that the Federal Circuit improperly relied on several cases invalidating patent claims involving the automation of manual processes, including University of Florida Research Foundation v. General Electric (2019) and Bancorp Services v. Sun Life Assurance Company of Canada (2012). "Manual shifting of digital pixels is not possible," Plotograph's petition notes, adding that the Federal Circuit's panel decision had no record evidence supporting the lack of technological advance in the face of Plotagraph's plausible allegations.

At step two of the Alice eligibility test, Plotagraph had argued to the Federal Circuit that four features of its patented technology rendered an inventive concept: the use of digital links and starting and ending points to provide direction for automatic pixel shifting; non-linear paths; masks that prevent shifting; and edge and anchor points for creating masks. While Plotagraph's petition asserts that these alleged inventive concepts should have allowed its patent claims to survive the motion to dismiss stage, the Federal Circuit found that such features were inherent in nonautomated computer animation as conventional user-defined parameters. However, according to Plotagraph, the only evidence available to the Federal Circuit were its own allegations that the claimed features "were not previously used with image editing" nor were they well-known or conventional.

Plotagraph's petition for writ had reiterated arguments made to the Federal Circuit that the invalidation of its patent claims ran contrary to Federal Circuit case law from 2016's McRO v. Bandai Namco Games America, which affirmed the validity of software patent claims covering computer-generated 3D lip synchronization. Arguing that its patent claims included sets of rules similar to those conferring eligibility to McRO's software patent claims, Plotagraph had contended that the Federal Circuit was wrong to distinguish McRO from the present appeal.

The adequacy of Plotagraph's validity allegations made it inappropriate to determine validity on a Rule 12(b)(6) motion under Aatrix Software v. Green Shades Software (2018), according to the petition for writ. Following the filing of Plotagraph's petition for writ, Lightricks had waived its right to respond in mid-September. The Supreme Court's cert denial comes one week after it denied cert to Eolas Technologies in a separate call for clarity on Section 101 patent eligibility in a case involving patent claims improving the online distribution of hypermedia.