Taking and sharing pictures with wireless devices has become a common practice. It’s hardly a recent development: the distinction between computers and cameras has shrunk, especially since 2007 when smartphone cameras became standard. Even though devices that can take and share photos wirelessly have become ubiquitous over a period spanning more than a decade, the Patent Office granted a patent on an “image-capturing device” in 2018.

A patent on something so commonplace might be comical, but unfortunately, U.S. Patent No. 9,936,086 is already doing damage to software innovation. It’s creating litigation costs for real developers. The creator of this patent is Rothschild Patent Imaging LLC, or RPI, a company linked to a network of notorious patent trolls connected to inventor Leigh Rothschild. We've written about two of them before: Rothschild Connected Devices Innovations, and Rothschild Broadcast Distribution Systems. Now, RPI has used the ’086 patent to sue the Gnome Foundation, a non-profit that makes free software.

The patent claims a generic “image-capturing mobile device” with equally generic components: a “wireless receiver,” “wireless transmitter,” and “a processor operably connected to the wireless receiver and the wireless transmitter.” That processor is configured i: to (1) receive multiple photographic images, (2) filter those images using criteria “based on a topic, theme or individual shown in the respective photographic image,” and (3) transmit the filtered photographic images to another wireless device. In other words: the patent claims a smartphone that can receive images that a user can filter by content before sending to others.

According to Rothschild’s complaint, all it takes to infringe its patent is to provide a product that “offers a number of ways to wirelessly share photos online such as through social media.” How in the world could a patent on something so basic and established qualify as inventive in 2018?

At least part of the answer is that the Patent Office simply failed to apply the Supreme Court’s Alice decision. The Alice decision makes clear that using generic computers to automate established human tasks cannot qualify as an “invention” worthy of patent protection. Applying Alice, the Federal Circuit has specifically rejected a patent on the “abstract idea of classifying and storing digital images in an organized manner” in TLI Communications.

Inexplicably, there’s no sign the Patent Office gave either decision any consideration before granting this application. Alice was decided in 2014; TLI in 2016. Rothschild filed the application that became the ‘086 patent in June 2017. Before being granted, the application received only one non-final rejection from an examiner at the Patent Office. That examiner did not raise any concerns about the application’s eligibility for patent protection, let alone any concerns specifically stemming from Alice or TLI.

The examiner only compared the application to one earlier reference—a published patent application from 2005. Rothschild claimed that system was irrelevant, because the filter was based on the image’s quality; in Rothschild’s “invention,” the filter was based on “subject identification” criteria, such as the topic, theme, or individual in the photo.

Rothschild didn’t describe how the patent performed the filtering step, or explain why filtering on these criteria would be a technical invention. Nor did the Patent Office ask. But under Alice, it should have. After all, humans have been organizing photos based on topic, theme, and individuals depicted for as long as humans have been organizing photos.

Because the Patent Office failed to apply Alice and granted the ’086 patent, the question of its eligibility may finally get the attention it needs in court. The Gnome Foundation has filed a motion to dismiss the case, pointing out that the patent’s lack of eligibility. We hope the district court will apply Alice and TLI to this patent. But a non-profit that exists to create and spread free software never should have had to spend its limited time and resources on this patent litigation in the first place.