Ever since the Supreme Court’s decision in Bilski v. Kappos, much uncertainty has existed regarding what is required for a claim to satisfy the threshold patent eligibility inquiry of 35 USC 101 and avoid being construed as an “abstract idea.” The Federal Circuit has provided guidance re. the foregoing in Research Corporation Technologies, Inc. v. Microsoft Corporation.
The Federal Circuit in Research Corp. reversed the District Court’s holding that certain claims of the subject patents were invalid under 35 USC 101. Focusing particularly upon the “abstract ideas” exception to the ”Patent Act’s broad patent-eligibility principles” of 35 USC 101, the Court found “nothing abstract” about the claims stating “the ’310 and ’228 patents claim methods (statutory ‘processes’) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” It should be noted that the panel consisted of Judges Rader, Newman, and Plager.
Claims
Claims 1 and 2 of the ’310 patent and claim 11 of the ’228 patent which the Federal Circuit held as patent-eligible subject matter are reproduced below:
“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 non-deterministic, 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.
“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.” (’228 patent)
Federal Circuit Guidance
The following statements from Research Corp. provide guidance for determining patent-eligible subject matter under 35 USC 101:
- “Section 101 emphasizes that ‘any’ subject matter in the four independent categories and ‘any’ improvement in that subject matter qualify for protection. The Supreme Court recently reemphasized the significance of these broad statutory categories with the broadening double ‘any’ exhortation as well. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). In that recent case, the Supreme Court also focused on the Patent Act’s definition for ‘process,’ the statutory category at issue in this case….”
- “Chakrabarty recited that ‘Congress plainly contemplated that the patent laws would be given wide scope.’ Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)”
- “The Supreme Court has articulated only three exceptions to the Patent Act’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’ Chakrabarty, 447 U.S. at 309.”
- “The section 101 patent-eligibility inquiry is only a threshold test. See Bilski, 130 S. Ct. at 3225.”
- “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.”
- “The statutory provision that approves the broad categories of subject matter, section 101, itself directs primary attention to ‘the conditions and requirements of [Title 35].’ 35 U.S.C. § 101 … in refocusing the eligibility inquiry on the statute, the Supreme Court advised that section 101 eligibility should not become a substitute for a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35. In other words, section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent. See Bilski, 130 S. Ct. at 3238 ….”
- “The invention presents functional and palpable applications in the field of computer technology. 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’ … The fact that some claims in the ’310 and ’228 patents require a ‘high contrast film,’ ‘a film printer,’ ‘a memory,’ and ‘printer and display devices’ also confirm this court’s holding that the invention is not abstract.”
- “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.”
- “This court also observes that the claimed methods incorporate algorithms and formulas that control the masks and halftoning. These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context. 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.’ Diehr, 450 U.S. at 185. Indeed, the Supreme Court counseled: In determining the eligibility of respondents’ claimed process for patent protection under section 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. Id. at 188.”