The Court of Appeals for the Federal Circuit which hears all patent appeals from the U.S. District Courts (the trial courts) recently ruled on whether Research Corporation Technologies’ (“RCT”) patented method of digital halftoning was patentable under 35 U.S.C. § 101 or whether the patent claims are not patentable subject matter as being “laws of nature, physical phenomena or abstract ideas.” Research Corporation Technologies, Inc. v. Microsoft Corporation, Case No. 2010-1037 (Fed. Cir. December 8, 2010) (available here). The Federal Circuit reversed the district court’s ruling which had earlier ruled that the patent claims defined non-patentable subject matter under Section 101 as being an abstract idea.
Since a determination of whether or not a patent claim defines non-patentable subject matter hinges on the words in the claim and the associated technology, a brief discussion of these topics is helpful. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixel colors. One method of generating a digital halftoned image is called thresholding, which uses an array called a “mask” that is populated with predetermined threshold numbers. The mask is laid over the image represented by pixel values. The district court ruled that the following claim 1 in RCT’s ‘310 patent was an abstract idea:
1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of: a random nondeterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.
Additionally, the district court held that claim 11 of RCT’s second patent, the ‘228 patent, was an abstract idea:
11. A method for the halftoning of color images, comprising the steps of: utilizing, in turn, a pixel by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of: a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.
After the district court ruled on various summary judgment motions, parties stipulated to the invalidity of the claims, filed a written stipulation dismissing the suit on the merits pursuant to the Federal Rules of Civil Procedure Rule 41(a)(1)(A)(ii), and the lower court subsequently granted the stipulation of dismissal.
The Federal Circuit reviews a grant of summary judgment without deference, Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007), reviews questions about patent-eligible subject matter under 35 U.S.C. § 101 without deference, In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009), and reviews without deference whether a patent is entitled to an earlier priority date. Go Med. Indus. Pty, Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed. Cir. 2006). The priority date issue involved certain claims in other patents asserted by RCT against Microsoft with an analysis of RCT’s earlier patent and later-filed continuation-in-part (C-I-P) patents (not the subject of this blog article).
The Federal Circuit held that the district court erred in finding that the above-quoted claims of the ‘310 and ‘228 patent were non-patentable abstract ideas. Section 101 of the Patent Statute defines patentable subject matter as follows:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
The importance of the word “any” in Section 101 was recently emphasized by the U.S. Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). In the RCT case, the Federal Circuit citing Bilski stated that “[t]he Supreme Court [has] recently reemphasized the significance of these broad statutory categories with the broadening double [reference to] ‘any’ exhortation” in Section 101. See Research Corp. Tech., Inc. v. Microsoft Corp., slip opn. 12. The Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) held that “Congress plainly contemplated that the patent laws would be given wide scope.”
More importantly, the Federal Circuit found that the “section 101 patent-eligibility inquiry is only a threshold test.” Research Corp., slip opn. 13. The Federal Circuit then ruled that RCT’s invention in claims 1 and 11 present functional and palpable applications in the field of computer technology.
“In this case, the subject matter is a ‘process’ for rendering a halftone image. As a process, the subject matter qualifies under both the categorical language of section 101 and the process definition in section 100.” Id. at 14.
“These inventions address ‘a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering’… Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act…. The Supreme Court has already made abundantly clear that inventions incorporating and relying upon even ‘a well known mathematical equation’ do not lose eligibility because ‘several steps of the process [use that] mathematical equation.’” Slip opn. 15, citing Diehr, 450 U.S. at 185.
However, in a cautionary note to patent practitioners, the Federal Circuit highlighted the importance of “enablement” language in the patent claim and “particularly describing” the claimed invention as required by 35 U.S.C. § 112.
“In the context of the statute, this court notes that an invention which is not so manifestly abstract as to override the statutory language of section 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In section 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention. Thus, a patent that presents a process sufficient to pass the coarse eligibility filter [of § 101] may nonetheless be invalid as indefinite because the invention would ‘not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.’” slip opn. 16, citing Star Scientific., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008).
In conclusion, the analytic tools to sort out “abstract ideas,” which are not patentable subject matter from “patent eligible” subject matter, are sometimes difficult to identify.