A recent decision by the U.S. Federal Circuit Court of Appeals is being hailed as a big win for the photo industry. The 2-year battle revolves around a company’s attempt to enforce a software patent, contending it owned exclusive rights to a data processing system for grouping photographs together.
The Kim & Lahey Law Firm represented the plaintiff, ImageQuix, a software company that was based in Greenville, SC, until recently moving to Raleigh, NC. In fall 2018, Snapizzi, a Washington state corporation, began contacting ImageQuix about its patented image tagging technology (U.S. Patent 8,794,506). ImageQuix had just released its latest photography workflow software that also included image tagging.
Snapizzi insisted they purchase a license. In reviewing the patent with its counsel, Doug Kim, ImageQuix President Alex Kovacevic decided to take the dispute head on. ImageQuix filed a lawsuit asking to the court to hold Snapizzi’s patent invalid and not infringed, contending photo tagging was not new to the industry. Snapizzi snapped back with a counterclaim alleging patent infringement.
In December 2019, the District Court ruled the Patent invalid under the now famous United States Supreme Court 2014 ruling Alice Corp. v. CLS Bank. Alice held that a computer implemented electronic escrow service was an “abstract idea” and therefore ineligible for patent protection under 35 USC § 101. In response, Snapizzi appealed to the Federal Court that hears all patent appeals. On Friday, the Federal Circuit affirmed the District Court holding that the Snapizzi patent was invalid.
Rich Scanlon, CEO, ImageQuix, says, “It's never an easy decision to take on the burden of a long court proceeding, but we felt it was our duty as industry leaders to go on the offensive. This ruling is also vindication for the school photo industry as a whole.”
"We could not stand by and allow innovation to be challenged and stifled," says Tim McCain, CRO of ImageQuix and Founder of PhotoLynx.
Although the Alice opinion did not specify all software is patent ineligible, the case is widely considered a decision against software patents. Patent eligibility rules are supposed to keep patents from being issued that cover ineligible subject matter, which the U.S. Supreme Court determined in its Alice decision constitutes the "basic tools of scientific and technological work" so as not to impede innovation and undermine patent laws.
“While Alice introduced hurdles to patenting software, understanding these rules and rulings allows a patent to be written to minimize the risk and even avoid § 101 rejections,” says Doug Kim, a former software programmer and now patent attorney.
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