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Federal Circuit invalidates key patent of 2013’s most litigious non-practicing entity

Acadia had attempted to assert its patent covering digital images against 31 separate companies

The patent troll problem may be getting worse by sheer numbers, but the Federal Circuit awarded a big victory to corporations everywhere when the most litigious non-practicing entity of 2013, Acacia Research Corporation, was defeated in court.

A three judge panel found that Acadia’s patent on a “device profile” that allows digital images to be displayed on devices was too abstract, upholding a lower court’s ruling to invalidate the patent and dismiss the patent infringement lawsuits that Digitech Image Technologies, a division of Acadia, filed against 31 different companies based on the technology.

“Contrary to Digitech’s argument, nothing in the claim language expressly ties the method to an image processor,” wrote Judge Jimmie Reyna in the decision. “The claim generically recites a process of combining two data sets into a device profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image.”

According to Ars Technica, Digitech had filed suit against a variety of companies connected to the digital imaging business, including Xerox, Toshiba, Fujifilm, Ricoh, Leica Camera,, and Newegg. U.S. Patent No. 6,128,415 was originally filed by Polaroid in 1996 and was sold multiple times before ending up in Acadia’s portfolio.



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RPX Corporation found that Acadia filed 239 patent lawsuits in 2013, earning the patent research group’s distinction of the year’s most litigious “patent troll.” U.S. Patent No. 6,128,415 was previously one of the jewels of the publicly traded company’s portfolio.

Now, however, the patent seems to be permanently invalidated, and a recent U.S. Supreme Court case backs up the Federal Circuit’s decision. The three judge panel cited Alice v. CLS Bank in its decision, saying that the patent constituted exactly the type of abstract patent that the decision looked to make ineligible under Section 101.

“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101,” wrote Judge Reyna.

Assistant Editor

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Zach Warren

Zach Warren is Assistant Editor of InsideCounsel magazine, where he oversees online content submissions and administers InsideCounsel's enewsletters. Zach specializes in new media and multimedia...

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