Contour IP Holding v. GoPro: A Development in Patent Subject Matter Eligibility Law

This case involves a patent infringement suit filed by Contour IP Holding LLC (“Contour”) against GoPro, Inc. (“GoPro”) involving point-of-view (POV) digital video cameras. Contour alleged that several GoPro products infringed on two of its patents, U.S. Patent Nos. 8,890,954 (the “’954 patent”) and 8,896,694 (the “’694 patent”).

The Technology at Issue

The asserted patents in this case involve portable, hands-free POV cameras designed for activities like skiing. A key feature of these cameras, as described in the patents, is their ability to wirelessly transmit real-time video footage to a remote device (like a cell phone) for the user to view and adjust recording settings.

A significant aspect of the patented technology is the camera’s ability to simultaneously record video in two formats: high quality and low quality. The lower quality stream is transmitted to the remote device for real-time viewing, while the higher quality version is stored on the camera. This “dual recording” method allows for “real time playback on the remote device without exceeding wireless connection bandwidth.” 

Claim Construction and the § 101 Challenge

Contour asserted that GoPro infringed on specific claims in its patents, primarily claim 11. Claim 11 is recited below for reference:

 

11. A portable, point of view camera, comprising:

a lens;

an image sensor;

an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene;

a wireless connection protocol device configured to send real time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and

a camera processor configured to:

receive the video image data directly or indirectly from the image sensor,

generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,

cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera, and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,

receive the control signals from the personal portable computing device, and

adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.

 

A crucial point of contention arose regarding the term “generate” in claim 11 of the ‘954 patent. The district court interpreted the term “generate” to mean “record in parallel from the video image data” based on arguments made by Contour during earlier proceedings. This interpretation emphasized that the claimed camera technology recorded both high- and low-quality video streams simultaneously, rather than sequentially.

GoPro, relying on the outcome of a similar case (Yu v. Apple Inc.), challenged Contour’s patents on the grounds of patent subject matter eligibility under 35 U.S.C. § 101. GoPro argued that Contour’s claims were essentially directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.” This argument, if successful, would render the patents invalid.

District Court’s Decision and Appeal

Initially, the district court sided with Contour, rejecting GoPro’s § 101 challenge. However, upon revisiting the issue during summary judgment, the court ruled in favor of GoPro, finding the asserted patent claims ineligible. The court characterized the claims as overly broad and lacking any inventive concept beyond the abstract idea itself.

Contour appealed the district court’s decision to the Court of Appeals for the Federal Circuit. 

Federal Circuit’s Analysis and Reversal

The Federal Circuit disagreed with the district court’s analysis, finding that Contour’s patent claims (namely claim 11) was patent eligible. The Federal Circuit emphasized the importance of considering the claimed invention’s technical improvements over prior art.

The Federal Circuit found that Contour’s patent claims focused on a specific technological solution, namely a parallel recording of different quality video streams and selective wireless transmission, that addressed the technological problem of recording different quality video streams and transmitting the same with limited bandwidth for real-time remote viewing.

The Federal Circuit: (1) criticized the district court for interpreting the claims too broadly and failing to recognize the technological innovation claimed by Contour’s patents; and (2) distinguished this case from Yu v. Apple Inc., highlighting that Contour’s claims were tied to a specific technological implementation not previously established as common practice.

As a result, the Federal Circuit reversed the district court’s decision, holding that Contour’s patent claims were directed to patent-eligible subject matter. The case was remanded to the district court for further proceedings.