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Research Corporation Technologies Inc. v. Microsoft Corp.: Sanity Returns to Section 101 Abstraction Analysis
Since the U.S. Supreme Court's Bilski v. Kappos decision, there have been a raft of District Court and Board decisions that took the "abstract idea" exclusion for patentable subject matter past the point of absurdity. Thankfully it did not take long for some sanity to return to the legal precedent on this all-important issue. On December 8, a three judge panel (Judges Rader, Newman and Plager) of the U.S. Court of Appeals for the Federal Circuit ruled that, to be found unpatentable under the abstract idea exclusion from 35 U.S.C. §101, an invention's abstractness must "exhibit itself so manifestly as to override the broad statutory categories" of patent eligibility. Research Corporation Technologies Inc. v. Microsoft Corp., Fed. Cir., No. 2010-1037, 12/8/10. RCT v. Microsoft Federal Circuit Decision
The patents in question, owned by Research Corporation Technologies Inc. (for a profile of this company's patent holdings see: http://www.patentbuddy.com/Company/Profile/RES-CORP-TECH-INC/155237), involved digital imaging process claims. The Federal Circuit found that these claims, which had been found unpatentable under Section 101 by the district court, are patentable subject matter because they claim "functional and palpable applications in the field of computer technology."
The RCT patents – 5,111,310; 5,341,228; 5,477,305; 5,543,941; 5,708,518; and 5,726,772 -relate to a particular method of digital halftoning in the pixel representation of images in computer displays and in printing.
Here is a representative RCT claim found statutory under 101:
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.
The following passage from the Federal Circuit's opinion represents the core of their reasoning:
"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. Therefore, this court proceeds to examine the Supreme Court's three exceptions. The parties do not dispute, and this court agrees, that the inventors do not purport to have invented laws of nature or physical phenomena. Therefore, this court turns to abstractness. Indeed, the Supreme Court in Bilski refocused this court's inquiry into processes on the question of whether the subject matter of the invention is abstract. The Supreme Court did not presume to provide a rigid formula or definition for abstractness. See, e.g., Bilski, 130 S.Ct. at 3236 (The Court has "never provide[d] a satisfying account of what constitutes an unpatentable abstract idea." (Stevens, J., concurring)). Instead, 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." Id. at 3231.
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 RESEARCH CORP v. MICROSOFT CORP 15 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. 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." '310 patent col.3 ll.3340. 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."
Steven Lundberg
Principal & Chief Innovation Officer