Research Corp. Tech. v. Microsoft Corp.
Fed. Cir. 2010-1037
December 8, 2010
The district court invalidated two method claims under § 101. A sample claim reads as follows:
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 per-form 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.
The Federal Circuit's analysis first noted that "in this case, the subject matter is a 'process' for rendering a halftone image." The court found that this subject matter qualifies as patentable subject matter under both the explicit category list in § 101 and the definition of process under § 100 ("The term 'process' means process art, or method ..." ).
The court then proceeded to examine the three patentable subject matter exceptions in the Supreme Court's jurisprudence: laws of nature; physical phenomena; and abstract ideas. Since the parties agreed that the claims were not directed to laws of nature or physical phenomena, the court then considered whether the subject matter amounted to an abstract idea. The court decided that the subject matter was not abstract:
The court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents. 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. The invention presents functional and palpable applications in the field of computer technology.
... 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.
The court acknowledged that the methods included algorithms, and even that those algorithms were a "significant part of the claimed combination." Even so, the algorithms "do not bring this invention even close to abstractness that would override the statutory categories and context." Using language from Diamond v. Diehr, the court found that "the patentees in this case 'do not seek to patent a mathematical formula' " but instead " 'seek patent protection for a process of' halftoning in computer applications."
My two cents: Definitely a pro-software decision. I would expect district courts to uphold software claims when applying this decision.
The decision is consistent with my understanding of "abstract." And more specifically, my position that claims that cover a computer implemented method cannot, by definition, be abstract – i.e., the computer takes the claims out of the realm of the abstract idea and into the physical world.
I was mystified by all the talk about "the invention" and "the subject matter of the invention." I'm used to thinking about claims, and considering whether claims cover patentable subject matter. I wonder if the talk about the "subject matter" relates to reading claims in the context of the specification. Certainly these claims are limited to a computer implementation unless you ignore the entire specification and what it means to a person of ordinary skill in the art.
I'm glad to have some post-Bilski guidance from the Federal Circuit. But does RCT v. Microsoft provide much guidance for evaluating tougher cases? Does the decision amount to "we know abstract when we see it, and this ain't it" ?
So far we have two guideposts. Bilski's invention, which didn't mention computers in the claims or the spec, is abstract. RCT's invention – which under a reasonable reading clearly ties to a computer even though a computer isn't positively recited – is not abstract. I see those guideposts as being pretty far apart, and we'll have to wait for other cases to fill out the stuff in between.