By Kevin E. Noonan —
One of the more unusual aspects of the Supreme Court's Bilski v. Kappos decision was its direction, towards the end of the majority opinion, that the Federal Circuit develop its case law on what would constitute an "abstract idea" for purposes of patent eligibility. After a decade of using the appellate court as its favorite whipping boy, the Court (for the first time since Warner-Jenkinson Co. v. Hilton Davis Chemical Co.) left the task in the hands of the Federal Circuit in deference to "that court's sound judgment in this area of its special expertise." Given how the Federal Circuit exercised its prerogatives in the peripatetic peregrinations of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the Supreme Court's reticence to repeat the experience may be understandable.
An example of how the Federal Circuit will exercise this prerogative is found in the court's decision in Research Corporation Technologies, Inc. v. Microsoft Corp., a case involving claims to computer methods for producing pixilated gray-scale images. While the details of the claims at issue are beyond the scope of the topics usually discussed herein, the principles enunciated by the Federal Circuit, and the analysis performed in arriving at its decision are informative. Briefly, the District Court found two claims of the patents-in-suit to be invalid under 35 U.S.C. § 101 as being directed to 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 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.
U.S. Patent No. 5,111,310 ("'310 patent")
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.
U.S. Patent No. 5,341,228 ("'228 patent")
The Federal Circuit reversed, in an opinion by Judge Rader joined by Judges Newman and Plager. The panel began its analysis by starting with the language of the statute, as interpreted by the Supreme Court in Bilski, as defining "broad statutory categories" further characterized by "the broadening double 'any' exhortation." Again citing Bilski, the panel references the statutory definition of "process" (35 U.S.C. § 100(b) as well as Diamond v. Diehr, 450 U.S. 175 (1981), and Diamond v. Chakrabarty, 447 U.S. 303 (1980), for the proposition that "Congress plainly contemplated that the patent laws would be given wide scope," Chakrabarty, 447 U.S. at 308, and that "courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'" Diehr, 450 U.S. at 182 (quoting Chakrabarty, 447 U.S. at 308). Noting the three exceptions to patent eligibility ("laws of nature, physical phenomena and abstract ideas") the panel quickly rejected the first two exceptions as not applying to the invalidated method claims. Thus, the question before the panel was whether the claims recited an abstract idea, and whether they were thus patent-ineligible. Also, the opinion cites Bilski for the proposition that "section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent" in derogation of the substantive patent law provisions ("a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35").
Turning to the claims at issue, the panel first finds that the claims are recited as a "process" which is one of the categories of statutory subject matter. Thus, the issue is whether the claims fall within the scope of the "abstract idea" exception. And the panel is keenly aware that the Supreme Court has not provided it with "a rigid formula or definition for abstractness" and that it writes on this aspect within the Supreme Court's instruction: "the Supreme Court invited this court to develop 'other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.'" Bilski at 3231. Accordingly, the panel treads lightly:
With that guidance, this court also will not presume to define "abstract" beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.
"In that context, this court perceives nothing abstract in the subject matter of the processes claimed in the '310 and '228 patents," the panel opined. The basis for this decision is that the inventive methods are "functional and palpable applications in the field of computer technology." The Court points to claims that recite tangible (i.e., not abstract) limitations including "high contrast film," "a film printer," "a memory," and "printer and display devices" as evidence that the recited method 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."
As it has done previously (most notably in its en banc Bilski decision), the Federal Circuit turns to express direction from the Supreme Court to anchor its bases for arriving at this conclusion:
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. Diehr at 188.
(Ironically, this analytical standard was ignored most notoriously by Justice Breyer in his dissent from dismissal of the Laboratory Corp. v. Metabolite Labs., Inc. ("LabCorp") case.)
The Federal Circuit also seems to direct the issue away from § 101 and to § 112: even if a claim is not "so manifestly abstract as to override the statutory language of section 101," § 112 precludes patentability for failure to contain "sufficient concrete disclosure to warrant a patent." Section 112 "provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention," even for claims reciting a process "sufficient to pass the coarse eligibility filter."
Application of these considerations to pending appeals on a number of cases relating to diagnostic method claims will be the subject of a future post.
Patent Docs 
Leave a reply to David Boundy Cancel reply