Mathematical Algorithm Found to be Unpatentable
By Joseph Herndon --
On June 21, 2016, the U.S. District Court for the Central District of California issued an order granting a motion to dismiss pursuant to Rule 12(b)(6) for lack of patentable subject matter under 35 U.S.C. § 101. Defendants NVIDIA Corp., Autodesk, Inc., and Pixar filed the motion to dismiss over Plaintiff Louis A. Coffelt, Jr.'s (proceeding pro se) U.S. Patent No. 8,614,710. The outcome here is not surprising given the state of the law with respect to unpatentable subject matter as applied to software patents.
The '710 Patent is directed to a method of selecting a color for a portion of a digital image by calculating and comparing various vectors within a specific region of space, known as a "steradian". The '710 Patent contains one independent claim, and it is reproduced below.
1. A method for deriving a pixel color comprising the steps of:
a computer calculating a first position vector for a geometric graphic object;
a computer calculating a particular steradian region of space;
a computer calculating a particular steradian radius of said steradian region of space;
a computer calculating that first second position vector is located in said particular steradian region of space;
a computer calculating a second position vector for a geometric graphic object;
a computer calculating that said second position vector is located in said particular steradian region of space;
a computer calculating a length of said first position vector
a computer calculating a length of said second position vector;
a computer comparing said first length to said second length;
for a first pixel, a computer deriving a pixel color for said first position vector from a result of said length comparison;
for a second pixel, a computer deriving a pixel color for said second position vector forma result of said length comparison.
During prosecution of the '710 Patent, the Examiner rejected the then-pending claims as being directed to non-statutory subject matter under § 101. In response, on March 7, 2013, Plaintiff amended his claims to include a limitation that the methods outlined in the claims would be performed by a machine, specifically, "a computer".
In the motion to dismiss, Defendants argue that the claims of the '710 Patent are not patent-eligible under § 101 because such claims are directed to an abstract idea -- a mathematical algorithm -- without adding any inventive concept.
The District Court followed the two-step approach set for by the Supreme Court in Alice, in which first it is determined whether the claims at issue are directed a patent-ineligible concept, and if so, then the court determines whether any additional elements transform the nature of the claim into a patent-eligible application. The Supreme Court made clear that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.
Whether the Claims are Directed to a Patent-Ineligible Abstract Idea
Defendants argue that the steps recited in method claim 1 merely express a mathematical algorithm and only explain how to calculate two vectors, calculate a steradian region, determine whether those vectors are located in that steradian region, compare the length of the vectors and then use that information to derive color information for the two vectors.
Defendants further point out that the calculations claimed can be done by a human mentally or with a pen and paper, and although the '710 Patent issued after Plaintiff placed the word "computer" to accomplish the steps in claim 1, the Examiner's implied reason for allowance directly contravenes the Supreme Court's ruling in Alice.
The Court found that Plaintiff did not rebut these contentions, and instead, went to great lengths to argue that space is not abstract, but is instead a region, and real object, we all exist in. Plaintiff relied on the contentions that space "exists literally" and that the computer calculations in claim 1 bring a particular steradian into existence to support his assertion that claim 1 is directed to Real Objects rather than to an abstract idea.
The Court noted the critical flaw with this argument, however, is that the '710 Patent does not claim "space", but rather claims methods of calculating a region of space and comparing various calculations to choose a pixel color.
The Court concluded that the steps recited in claim 1 are directed to an abstract, mathematical algorithm. The Court found that a pixel color is derived mathematically using vectors in a particular steradian region, and the calculations claimed can be done by a human mentally or with a pen and paper. There is no specific machine claimed for performing the calculations, nor do the claims inherently require one.
Whether the Claims Include an "Inventive Concept"
Defendants contended that the claims do nothing more than state the abstract idea to be applied using a generic computer.
Plaintiff responded by noting that the '710 Patent includes a full, concise, and exact description of the inventive step. Plaintiff argued that the '710 Patent's "inventive concept" is evidenced by the fact that the software built around the '710 Patent accomplishes things that the industry has struggled to do for many years. However, the Court noted that while an invention may be new, useful, or lucrative that does not demonstrate that the invention is thus eligible for patent protection under § 101.
The Court found that because the claims themselves do not contain any limitations regarding specific hardware or software that must be used to perform the claimed methods, and the specification provides that "[o]bviously, the mathematical calculations set forth herein may be executed by various computer programming languages," then the claims lack any inventive concept.
Thus, the methods claimed in the '710 Patent were found to be unpatentable under 35 U.S.C. § 101 because they recite merely a series of mathematical calculations that can be used to create a steradian region.
Looking at claim 1, clearly, the claim is written broadly to cover how to determine a color of a pixel. Perhaps adding further context to the claim to define where the pixel came from, what the geometric graphic object refers to, or even just tying the steradian region of space to the geometric graphic object in some way could be helpful. This claim appears to have issues, even prior to the Supreme Court in Alice, and after Alice, it stood no chance.
In addition, while it may have been possible to convince an examiner to allow claims through the addition of a "computer" performing the steps in 2013, that no longer will suffice today. Rather, the claims must recite non-routine or non-conventional use of the recited "machine".
Coffelt v. NVIDIA Corp. (C.D. Cal. 2016)
Order by District Judge S. James Otero