Carl M. Burnett v. Panasonic Corporation, Panasonic Corporation of North America, Panasonic…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CARL M. BURNETT,
Plaintiff-Appellant
v.
PANASONIC CORPORATION, PANASONIC
CORPORATION OF NORTH AMERICA,
PANASONIC INTELLECTUAL PROPERTY
CORPORATION OF AMERICA,
Defendants-Appellees
______________________
2018-1234
______________________
Appeal from the United States District Court for the
District of Maryland in No. 8:17-cv-00236-PX, Judge
Paula Xinis.
______________________
Decided: July 16, 2018
______________________
CARL M. BURNETT , Silver Spring, MD, pro se.
J OSEPH CASINO, Wiggin and Dana LLP, New York,
NY, for defendants-appellees. Also represented by
MICHAEL J. K ASDAN; BENJAMIN M. D ANIELS , New Haven,
CT.
______________________

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BURNETT v. PANASONIC CORPORATION 2
Before O’MALLEY , CLEVENGER , and REYNA, Circuit Judges.
P ER CURIAM .
Carl M. Burnett (“Burnett”) appeals an order of the
United States District Court for the District of Maryland
dismissing Burnett’s amended complaint for failure to
state a claim upon which relief can be granted. Burnett v.
Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
(“District Court Decision”). Specifically, because the
district court held that claims 1 and 9 of U.S. Patent No.
7,107,286 (“the ’286 patent”) are invalid as directed to
ineligible subject matter under 35 U.S.C. § 101, it con-
cluded that dismissal pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure was appropriate. Bur-
nett argues that the asserted claims are patent-eligible,
that the district court erred procedurally when it failed to
construe five allegedly disputed claim terms, and that the
district court violated Burnett’s due process rights when it
failed to hold Rule 12(b)(6) and claim construction hear-
ings. We affirm.
I
Burnett sued Panasonic Corporation (“Panasonic”) for
infringement of independent claims 1 and 9 of the ’286
patent, which recite:
1. A geospatial media recorder, comprising:
converting means for converting longitude and
latitude geographic degree, minutes, and seconds
(DMS) coordinate alphanumeric representations
or decimal equivalent geographic coordinate al-
phanumeric representations and altitude alpha-
numeric representations into individual discrete
all-natural number geographic coordinate and
measurement representations; and

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BURNETT v. PANASONIC CORPORATION 3
combining means for concatenating the individual
discrete all-natural number geographic coordinate
and measurement representations into a single
discrete all-natural number geospatial coordinate
measurement representation for identification of a
geospatial positional location at, below, or above
earth’s surface allowing user to geospatially refer-
ence entities or objects based on the identified ge-
ospatial positional location and point
identification.
* * *
9. A geospatial information processing method
comprising:
converting latitude and longitude geographic de-
gree, minutes, and seconds (DMS) coordinate al-
phanumeric representations or decimal equivalent
geographic coordinate alphanumeric representa-
tions and altitude alphanumeric representations
into individual discrete all-natural number geo-
graphic coordinate and measurement representa-
tions; and
concatenating the individual discrete all-natural
number geographic coordinate and measurement
representations into a single discrete all-natural
number geospatial coordinate measurement rep-
resentation for identification of a geospatial posi-
tional location at, below, or above earth’s surface
allowing a user to geospatially reference entities
or objects based on the identified geospatial posi-
tional location and point identification.
’286 patent, col. 13, l. 60–col. 14, l. 9; id. at col. 15, ll.
5–21.
Panasonic moved to dismiss for failure to state a
claim upon which relief can be granted. In his response to
Panasonic’s motion to dismiss, Burnett proposed construc-

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BURNETT v. PANASONIC CORPORATION 4
tions of certain claim terms, which Panasonic did not
dispute, Suppl. J.A. 671–672. First, Burnett proposed
construing the preamble of claim 1, “geospatial media
recorder,” as limiting and to mean “[a] video camcorder
that has a receiving station to receive geospatial infor-
mation and a video encoder to encode geospatial infor-
mation, the GEOCODE®, onto video at the time of video
acquisition.” Suppl. J.A. at 654. Burnett also proposed
construing at least a portion of the preamble of claim 9,
“geospatial information,” as limiting and to mean
“[s]atellite navigation systems data concerning geospatial
entities obtained through a variety of methods . . . .”
Suppl. J.A. at 653. Next, Burnett proposed construing
“concatenating,” which appears in both claims, as “[a]
programming process that is the operation of joining two
strings together . . . .” Suppl. J.A. at 653. Burnett also
proposed construing “converting,” which appears in both
claims, as “[t]he computer process of taking geospatial
positioning representations in Degree-Minute-Second, or
Decimal Degree, and altimetric format and other geospa-
tial information and changing these geospatial positioning
entities into an all-natural number that can be used to
create a geospatial coordinate, the GEOCODE® for use as
a data segment or object in geospatial information system
processing operations and analysis.” Suppl. J.A. at 654.
Finally, Burnett proposed construing “geospatial posi-
tional location and point identification” as “[t]he vertex of
the planular geospatial measurement representations of
longitude and/or latitude and/or altitude and/or other
measurement representations.” Pl.’s Sur-reply in Opp’n
to Def.’s Mot. to Dismiss, Burnett v. Panasonic Corp., No.
17-cv-0236, at 15 n. 1 (D. Md. Apr. 21, 2017), ECF No. 23-
1.
In its decision, the district court first found that the
claims are directed to a patent-ineligible mathematical
methodology “for converting geographic coordinates into
alphanumeric representations.” District Court Decision,

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BURNETT v. PANASONIC CORPORATION 5
at 10. Next, the district court found that any additional
features of the asserted claims, such as limitations di-
rected to using a computer to implement the mathemati-
cal methodology, do not transform the nature of claims
into patent-eligible concepts. Id. at 11–13. In its analy-
sis, the district court acknowledged and implicitly accept-
ed Burnett’s proposed claim constructions. Id. at 9 n.6.
The district court concluded that the asserted claims are
patent-ineligible and dismissed Burnett’s amended com-
plaint pursuant to Rule 12(b)(6). Burnett appeals. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). For
the reasons stated below, we find that, even accepting
Burnett’s proposed constructions, the asserted claims are
patent-ineligible.
II
The Fourth Circuit reviews de novo a dismissal under
Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
F.3d 380, 385 (4th Cir. 2009). “We have held that patent
eligibility can be determined at the Rule 12(b)(6) stage,”
but “only when there are no factual allegations that,
taken as true, prevent resolving the eligibility question as
a matter of law.” Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
Here, the district court appropriately assessed eligibility
at the pleading stage because the asserted claims are
patent-ineligible even when accepting as true all factual
allegations pled in Burnett’s amended complaint.1
1 Burnett’s factual allegations include allegations
under step two of Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347, 2355 (2014), and extrinsic evidence
supporting his proposed claim constructions. When
applying step two of Alice, we have said that the question
of “[w]hether the claim elements or the claimed combina-
tion are well-understood, routine, conventional is a ques-

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BURNETT v. PANASONIC CORPORATION 6
Patent-eligible subject matter, as defined in § 101, in-
cludes “any new and useful process, machine, manufac-
ture, or composition of matter, or any new and useful
improvement thereof . . . .” The Supreme Court has long
held that “[l]aws of nature, natural phenomena, and
abstract ideas” are exceptions to § 101. Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genet-
ics, Inc., 569 U.S. 576, 589 (2013)). These exceptions
render ineligible, for example, mathematical formulas.
Gottschalk v. Benson, 409 U.S. 63, 67 (2012).
We apply a two-step test to determine whether a
claim is directed to eligible subject matter. Alice, 134 S.
Ct. at 2355; Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012). First, we deter-
mine whether the claim is directed to a law of nature, a
natural phenomenon, or an abstract idea. Alice, 134 S.
Ct. at 2355. If so, then we proceed to step two and consid-
er the elements of the claim “both individually and ‘as an
ordered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-
tion of fact.” Aatrix, 882 F.3d at 1128. Here, Burnett
does not contest that each element of the asserted claims
is well-understood, but rather argues that the elements
from each claim form new combinations. Appellant Br.
48–53. Burnett also submits extrinsic evidence in the
form of dictionary definitions in support of his proposed
claim constructions, which the Supreme Court has held
can give rise to a factual dispute. Teva Pharms. USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 837–38 (2015). None of
these factual allegations precludes resolution of the
eligibility question at the pleading stage because Pana-
sonic does not dispute these allegations, and because we
conclude that the asserted claims are patent-ineligible
even when accepting the allegations as true.

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BURNETT v. PANASONIC CORPORATION 7
eligible application.” Id. (quoting Mayo, 566 U.S. at 78,
79).
A
Starting at step one, we agree with the district court’s
conclusion that the claims at issue are directed to an
abstract idea. Both claims 1 and 9 are directed to, first,
converting longitude and latitude coordinates into natural
numbers—i.e. removing the decimal points and replacing
any “+” signs with a “1” and any “–” signs with a 0—and
second, concatenating the resulting natural numbers—i.e.
joining the strings of resulting numbers together. See,
e.g., ’286 patent, at col. 12, l. 50–col. 13, l. 14; id. at Figure
26. In sum, the claims apply a mathematical methodolo-
gy to convert geospatial coordinates into a single string of
natural numbers.
Like the concept of using a formula to convert binary-
coded decimals into pure binary numerals, which the
Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72, the concept of using a formula to convert
geospatial coordinates into natural numbers, if found
eligible, “would wholly pre-empt the mathematical formu-
la and in practical effect would be a patent on the algo-
rithm itself.” Claims 1 and 9 are both directed to a
similarly abstract idea.
Burnett contends that the asserted claims, construed
as Burnett proposes, are not directed to a mathematical
methodology. For example, Burnett contends that, be-
cause his proposed construction of “concatenating” begins
with “programming process,” it is not a mathematical
methodology, but rather a “data programming process.”
Appellant Br. at 26. We disagree because each claim, at
its core, is directed to an abstract idea. Accepting that the
“concatenating” limitation is directed to a “programming
process” does not change this result. We have held that a
process that starts with data, applies an algorithm, and
ends with a new form of data is directed to an abstract

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BURNETT v. PANASONIC CORPORATION 8
idea. Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Similarly,
here, the “concatenating” programming process merely
joins a string of numbers together, constituting the final
algorithmic step of converting the geospatial coordinate
data into a new form of data. Thus, Burnett’s proposed
construction of “concatenating” does not change the fact
that the claims are directed to an abstract idea.
Next, Burnett argues that his proposed construction
of “converting” identifies the term as “a prescriptive step
required for data programming process of concatenation.”
Appellant Br. at 28. That the “converting” step necessari-
ly precedes the “concatenating” step does not change the
fact that the claims are directed to an abstract idea. The
“converting” step is merely an earlier step in the process
of mathematically converting the data into a new form.
Thus, the “converting” step also does not transform the
mathematical methodology into eligible subject matter
because the step amounts to routine data processing.
The remainder of Burnett’s arguments related to his
proposed claim constructions stand for the proposition
that “the claims recite significantly more than the pur-
ported idea of a ‘mathematical methodology.’” Appellant
Br. at 46. But that a claim allegedly contains more than
an abstract idea does not mean the claim survives step
one, because, under that inquiry, it is enough that the
claims are directed to a mathematical methodology at all;
rather, Burnett’s argument is more appropriately as-
sessed under our inquiry in step two. Alice, 134 S. Ct. at
2355 (assessing under step two whether additional fea-
tures in a claim transform an otherwise a patent-
ineligible concept into a patent-eligible concept).
B
Turning to step two, we ask “[w]hat else is there in
the claims before us” and whether those “additional
features . . . provide practical assurance that the [claims

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BURNETT v. PANASONIC CORPORATION 9
are] more than a drafting effort designed to monopolize
[the abstract idea].” Mayo, 566 U.S. at 77, 78. Here, we
agree with the district court that the additional features,
viewed individually and as an ordered combination, are
not “sufficient to transform the nature of the claim[s].”
Id. at 78.
The only additional features recited in claim 1 are the
preamble providing for “[a] geospatial media recorder,”
’286 patent, at col. 13, l. 60, and the limitation of “allow-
ing user to geospatially reference entities or objects based
on the identified geospatial positional location and point
identification,” id. at col. 14, ll. 7–9. Similarly, the only
additional features recited in claim 9 are the preamble
providing for “[a] geospatial information processing meth-
od,” id. at col. 15, ll. 5, and the limitation of “allowing a
user to geospatially reference entities or objects based on
the identified geospatial positional location and point
identification,” id. at col. 15, ll. 19–21.
As the district noted, these additional features effec-
tively do no “more than simply state the [abstract idea]
while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
The preambles of both claims, as construed by Burnett,
instruct a user to implement the mathematical methodol-
ogy or instruct using a “geospatial media recorder” to do
the same. Such “wholly generic computer implementation
is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract
idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
at 77); accord Gottschalk, 409 U.S at 70–72.
The remaining additional feature, “allowing [a] user
to geospatially reference entities or objects based on the
identified geospatial positional location and point identifi-
cation,” recited in both claims, similarly does not trans-
form the nature of the claim, and merely recites a
potentially useful result of the invention. ’286 patent, at

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BURNETT v. PANASONIC CORPORATION 10
col. 14, ll. 7–9, col. 15, ll. 19–21. The prosecution history
of the ’286 patent is particularly relevant here. During
prosecution, the examiner amended claim 1 and claim 12
(renumbered as claim 9 before issuance) by adding the
additional feature to bring the claims in compliance with
the § 101 standard applied at that time. Suppl. J.A. 24;
see also id. at 20–23. Under this previous standard, courts
and examiners considered whether the claims had a
“useful, concrete and tangible result.” In re Bilski, 545
F.3d 943, 959 (Fed. Cir. 2008) (en banc). This standard no
longer governs. Id. at 959–60 (concluding “that the ‘use-
ful, concrete and tangible result’ inquiry is inadequate . . .
.”); see also Bilski v. Kappos, 561 U.S. 593, 659 (2010)
(Breyer, J., concurring) (“[A]lthough the machine-or-
transformation test is not the only test for patentability,
this by no means indicates that anything which produces
a ‘useful, concrete, and tangible results,’ is patentable.
This Court has never made such a statement and, if taken
literally, the statement would cover instances where this
Court has held the contrary.” (internal quotations and
citations omitted)). While this additional feature may
demonstrate that the invention produces a useful result,
it does not transform the abstract idea into patent-eligible
subject matter under the Supreme Court’s decision in
Alice.
Burnett argues that claim 1 “cover[s] a ‘combination
of elements’ that form a new machine, a Geospatial Media
Recorder,” and that claim 9 covers a “new data program-
ming process . . . .” Appellant Br. at 48. Burnett points to
the Supreme Court’s decision in Diamond v. Diehr, 450
U.S. 175, 188 (1981), for the proposition that “a new
combination of steps in a process may be patentable even
though all the constituents of the combination were well
known and in common use before the combination was
made.” Burnett argues that, similarly, here, “a media
recorder that encode[s] geospatial information as a[n]
item of metadata to solve geospatial data communication

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BURNETT v. PANASONIC CORPORATION 11
problems in video production environments had never
before been invented.” Appellant Br. at 53.
Burnett is correct that a new combination of steps,
though individually ineligible or well-known, can give rise
to a patent-eligible claim, but this purportedly new com-
bination must still survive the step two inquiry. As
stated above, claim 9 does no more than instruct a user to
implement the abstract idea of converting geospatial
coordinates into natural numbers, and claim 1 merely
provides for a “Geospatial Media Recorder” to implement
the same abstract idea. Thus, these purportedly new
combinations do not transform the abstract idea into a
patent-eligible concept under our precedent.
We have reviewed Burnett’s remaining arguments re-
garding eligibility, and we reject them as both unpersua-
sive and applying legal standards that no longer govern or
that govern outside of the context § 101. See, e.g., Appel-
lant Br. at 32, 51 (citing this court’s decision in In re
Alappat, 33 F.3d 1526 (Fed. Cir. 1994), which was super-
seded by Bilksi v. Kappos, 561 U.S. 593 (2010) and Alice.);
Appellant Br. at 34, 51 (citing this court’s decision in
WMS Gaming Inc. v. International Game Technology., 184
F.3d 1348 (Fed. Cir. 1999), which does not address patent
eligibility).
III
Burnett also argues that the district court erred when
it failed to construe allegedly disputed claim terms, and
that it violated Burnett’s due process rights when it failed
to hold claim construction and 12(b)(6) hearings prior to
dismissing Burnett’s amended complaint. The district
court did not need to hold a claim construction hearing or
issue a claim construction order because Panasonic did
not dispute Burnett’s proposed constructions, Suppl. J.A.
671–672, and because the asserted claims are patent-
ineligible even in view of Burnett’s proposed construc-
tions. Moreover, “[t]here is no requirement . . .that a

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BURNETT v. PANASONIC CORPORATION 12
district judge hold a hearing prior to ruling on a motion to
dismiss.” Pueschel v. United States, 369 F.3d 345, 354
(4th Cir. 2004). Therefore, the district court did not err
procedurally, nor did it violate Burnett’s due process
rights.
IV
For the reasons stated above, we affirm the district
court’s order dismissing Burnett’s amended complaint,
holding that claims 1 and 9 of the ’286 patent are ineligi-
ble.
AFFIRMED
COSTS
No costs.

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