TLI Social Media Storage Patent Affirmed Ineligible

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By Tony Dutra

May 17 — A patent on storing images generated by camera phones asserted against social media companies is invalid, the Federal Circuit affirmed May 17.

The ruling comes in contrast to the court's breakthrough decision on patent ineligibility five days earlier in Enfish, LLC v. Microsoft Corp.

Judge Todd M. Hughes wrote both opinions. In his earlier decision, Hughes saw Enfish as claiming the benefits of a new database structure over conventional databases. But in the more recent case, TLI Communications LLC simply applied “conventional or generic technology in a nascent but well-known environment,” he said.

Those who appealed and will benefit from the decision include Pinterest, Snapchat, Tumblr, Twitter and eight other Internet application providers. TLI had also sued Apple, Facebook and Google, but they each settled after the district court ruling in their favor.

Source Material:

Case below:87 F. Supp. 3d 773 (E.D. Va. Feb. 6, 2015)

U.S. Patent:No. 6,038,295

Distinguishing Enfish

The U.S. Supreme Court's 2014 decision in Alice Corp. Pty Ltd. v. CLS Bank Int'l subjects computer-related patents to a two-step test for eligibility under 35 U.S.C. §101: Is it directed to an abstract idea? If so, is there “enough” in the rest of the patent claim—an “inventive concept”—that overcomes the abstractness.

Until May 12, the U.S. Court of Appeals for the Federal Circuit had ruled only one such patent eligible under the test, and it did so in that case—DDR Holdings, LLC v., L.P.—without answering the first question. The Enfish decision said that an improvement in the “software arts” could pass the test at Alice step one so long as the invention is “directed to an improvement to computer functionality” (93 PTD, 5/13/16).

Enfish's invention improved computing via “increased flexibility, faster search times, and smaller memory requirements,” the court said. The Enfish ruling never describes a specific problem that the inventor solved. When it refers positively to solving “a problem in the software arts,” it is ostensibly citing needs to overcome inflexibility, slow search and large memory needs in database management technology.

Enfish involved an advancement in an old software technology. By contrast, the TLI court now held, TLI used old software—and hardware—technology to address an “abstract” problem created by a new application.

Too Many Images

TLI's U.S. Patent No. 6,038,295 claims to address a problem generated by the large-scale transfer of image data from mobile phones to social media firms' servers. TLI said that “the problems locating the data of an image data file increase as the number of images to be archived increases.” Its “organizing, classifying, and storing” solution addressed those problems.

But, the court said, “classifying and storing digital images in an organized manner” is an abstract idea. TLI's solution was a classification scheme—such as by using dates or timestamps—implemented in the server through conventional data storage and retrieval features.

The court indicated that TLI would have been successful had it addressed a problem about camera use on a mobile phone or device, transmitting the images “or even how to append classification information to that data.”

But, the court said, “the recited physical components behave exactly as expected according to their ordinary use.”

Finally, the court left no doubt that patents “involving” mobile phones do not get an automatic pass under the Alice test. The phone in TLI's invention “simply provides the environment in which the abstract idea of classifying and storing digital images in an organized manner is carried out.”

Judges Timothy B. Dyk and Alvin A. Schall joined the opinion. The Enfish panel included Judges Kimberly A. Moore and Richard G. Taranto.

Mishcon de Reya New York LLP represented TLC. Durie Tangri LLP argued on behalf of the alleged infringers, with Williams Mullen PC and Troutman Sanders LLP also representing specific defendants-appellees.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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