An Application of the Abstract Idea Exclusion to Patent Eligibility

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.

Comments

[Skeptical]

Is this a case of "be careful of what you wish for" for the Supreme Court?

As noted on the Patently-O website, the level of jurisprudence re-tasked with setting the 101 level had previously given us the State Street Bank's "useful, concrete and tangible", which did not appear to satisfy the Supreme Court. We now have "palpable is to tangible as functional is to useful..." - a subset, and in essence an even wider gate.

[Kevin E. Noonan]

Dear Skeptical:

One can hope that the experience of the Bilski oral argument gave the members of the Supreme Court some small appreciation of the difficulties in trying to draw these semantical lines, and that they gave the task to the Federal Circuit for at least one good reason (maybe that court will be able to figure it out in view of their "particular expertise") and at least one bad reason (and if they don't we can come back with the benefit of some additional cases that might help us decide where to draw the line - at least we won't have to struggle with it in the first instance).

Much like the written description requirement, the Supreme Court and the Federal Circuit seem to believe, like Blackstone, that cases best illuminate the path forward and that trying cases in the courtroom, much like performing experiments in a laboratory, is the best way to make these decisions. We'll see - it depends on the decisions we ultimately get, I suppose.

Thanks for the comment

[6]

A ridiculous notion Kev.

[Kevin E. Noonan]

6:

Could you be a little less cryptic? This is what the CAFC is doing; why are they wrong? (And remember, the Supreme Court praised Chief Judge Rader in its Bilski opinion.)

[6]

"Much like the written description requirement, the Supreme Court and the Federal Circuit seem to believe, like Blackstone, that cases best illuminate the path forward and that trying cases in the courtroom, much like performing experiments in a laboratory, is the best way to make these decisions. We'll see - it depends on the decisions we ultimately get, I suppose."

I was saying that the notion which you suggest that the USSC and Fed seem to believe is ridiculous. Cases, at least the ones in our legal system, do not, and never will, illuminate the best path forward. They might would, except that only med dollar cases get to trial, and high dollar cases ever get to the Fed and even more high dollar or important ones get to the USSC. For instance, this case is plainly wrongly decided from even a basic review (I'm not saying they necessarily got the result wrong) but it will likely not go to the USSC and we'll have [redacted] citing the equivalent of the UCT test for awhile yet even if the court didn't mean to necessarily implement it.

The case at hand was ridiculously decided for a multitude of factors. I have an extensive rundown posted at PO. But the highlights are that the Fed doesn't seem to understand the factual situation before it, may have brought back the UCT SS test in a new even broader form (which was, everyoe presumes, the reason it was let go in the en banc decision), misquoted the USSC as inviting them to impose other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text in regards to the USSC's OWN EXCEPTIONS rather than TO ELIGIBILITY ITSELF as the USSC actually invited them to do (not to mention that here they obviously repealed limiting criteria as opposed to imposing additional criteria). There are more highlights and I could go on all day but there's a whole thread which you can read at your leisure.

Oh, and lest I forget, the Feds were too lazy to do an abstract idea inquiry for the defendant and instead simply declared that they saw nothing abstract (then went even further to say that abstractness should be readily apparent from the get go or else it doesn't really countlol) I'm not sure if they're necessarily obliged to do such an analysis, but generally speaking they seem to do those sorts of things when they're reviewing De novo.

[EG]

"The case at hand was ridiculously decided for a multitude of factors."

6,

Au contraire, what was "ridiculously decided" was the district court ruling that this claimed "process" for rendering halftone images was even close to being patent-ineligible. We're not talking here about some vague "abstract idea" like commodity risk hedging (like in Bilski), but a real world process for displaying and printing computer images. Rader is correct that 35 USC 101 should be used only as a coarse screen and that the disqualifying "abstractness" should be readily apparent, especially if you analyze the claim under 35 USC 112. That is isn't even close to the situation with this claimed process for rendering halftone images.

I would frankly be happy if the Federal Circuit could bring back the "tangible, concrete, and useful" standard from State Street. It is the only objective test I've seen for patent-eligibility. But that's not going to happen as the en banc Federal Circuit in Bilski killed it, and a majority of SCOTUS certainly didn't agree that the "tangible, concrete, and useful" standard should be brought back.

[Kevin E. Noonan]

6:

Thanks for the invitation - I'll check out your PO comments.

However, I do think that the Federal Circuit will fashion an abstract idea test much like what we have here, that to be an abstract idea a claim must encompass only an abstract idea (one that, for example, could be practiced in your head like commodities trading). Anything that touches on the concrete will pass the 101 screen (while being liable to be caught in a 112 trap to police overbreadth). Reciting concrete steps also helps satisfy the "machine or transformation" test.

Thanks for the comment. P.S. Did you expect a court expressly created to harmonize US patent law to be anti-patent?

[6]

"However, I do think that the Federal Circuit will fashion an abstract idea test much like what we have here, that to be an abstract idea a claim must encompass only an abstract idea (one that, for example, could be practiced in your head like commodities trading). Anything that touches on the concrete will pass the 101 screen (while being liable to be caught in a 112 trap to police overbreadth). Reciting concrete steps also helps satisfy the "machine or transformation" test."

If they do they'll just be waiting for a ussc smackdown. But that certainly isn't new.

"Did you expect a court expressly created to harmonize US patent law to be anti-patent?"

No, but I would hope that it would be patent neutral so to speak. And I would say that, Rader and Newman are pretty much the only two that are so patent protectionist as to be worthy of song. A dark song, but song no less.

[6]

"We're not talking here about some vague "abstract idea" like commodity risk hedging (like in Bilski), but a real world process for displaying and printing computer images. "

No, you're talking about some vague "abstract idea" like changing Binary to BCD (like in Benson), a real world process for displaying and printing and doing all other sorts of computer related things.

Fact is, I doubt if you ever know what half-toning is or what the "masks" involved are. Don't worry, the court probably didn't either. Go read at PO.

"I would frankly be happy if the Federal Circuit could bring back the "tangible, concrete, and useful" standard from State Street. "

Of course you would, because you're a [redacted] who would like to get smacked down by the USSC. Again. And again. And again. Ad infinitum. Kind of like the members of a certain court. Get your acts together and at least pretend you respect our system of lawl.

[Kevin E. Noonan]

Well, 6, you know listening to the oral argument in Bilski it was pretty clear the Supreme Court didn't know exactly where to draw this particular line, either. They have the ultimate responsibility but that doesn't mean (despite their recent penchant to review Federal Circuit decisions) that it is a task they take lightly. You are no doubt influenced by the past 10 years - remember, with few exceptions the Supreme Court didn't hear many patent cases for the 20 years prior.

Now, I think there is a fair chance that these claims are more similar to the claims in Benson than in Diehr, but the fact that the output - an image - is tangible may be enough to distinguish Benson. While inside the computer it may just all be numbers, what you get from the practice of this method is not (unless you think reality is a Matrix-like stream of code).

And while the Supreme Court doesn't like the outcome of State Street (business method patents), I'm not sure it is the worst test in the world. Remember, State Street involved claims to a system, not a method - perhaps the problem is that it is harder for a method to be "tangible, concrete and useful."

And, I know you've been on PO lately where you can pretty much say anything you like any way you like, but remember that doesn't fly so much here.

Thanks for the comment.

[Skeptical]

Kevin,

I did not get the impression at all that the oral arguments (or any phase) of the Bilski case helped the Supreme Court gather a better understanding of the patent system.

Unfortunately, the most prominent feature that I gathered from the result was the deep polarization of philosophies in that body. Even given the plainly evident acknowledgment by Congress that business methods are patentable subject matter, the court was entangled in a partisan debate on the "what should be" points.

And while Stevens rightly pointed out the absence of discussion on "abstract" from the majority, he failed to flesh the concept out as well.

I find it interesting as David Boundy pointed out at the Patently-O blog, that Bilski essentially serves as a reset button, and this instant decision appears to both minimize the importance of 101 (a very coarse filter) and is less purposely intensive than the "tangible, concrete and useful" State Street guidance, which the Supreme Court did not appear to like at all.

I do think that a battle between the two courts over who has the last word on patent jurisprudence is underway. This volley one ups the Bilski court's lack of substantive guidance. It is as if the CAFC took notice that the Supremes thought State Street wasn't enough and offered even less guidance as State Street as the first move after the reset. To me, the CAFC is calling out the Supremes for over-riding CAFC decisions but not replacing those decisions with clear rules. The anti-brightline position of the Supremes is set against the brightline clarity of the CAFC in a jurisprudential chess match. In this decision, the CAFC has advanced a pawn to test what the Supremes will do.

[Kevin E. Noonan]

Dear Skeptical:

Another way of looking at it, especially in view of Judge Rader becoming Chief Judge, and in view of the spate of en banc decisions from the court, is that this is a way for the CAFC to reassert their role in harmonizing patent law. If the Supreme Court wants to second guess, that's it's prerogative, but it gives them a clear target one way or the other. I totally agree that the "totality of the circumstances" approach favored by the Supreme Court is less than useless in deciding questions of patent law, and is arguably contrary to the Congressional mandate establishing the CAFC.

Thanks for the comment.

[6]

"Now, I think there is a fair chance that these claims are more similar to the claims in Benson than in Diehr, but the fact that the output - an image - is tangible may be enough to distinguish Benson."

Lulz, you don't think you could use benson's method to make an image?

Kev. You. Obviously. Do. Not. Understand. Anything. About. Benson's. Facts.

And I'm not being mean.

Benson could be used in a train, in a plane, in a printer, a computer controlling a printer, or with green eggs and ham.

Be clear, both Benson and the instant case both happen inside of a computer. The fact that Benson's results CAN stay inside a computer (i.e. nothing from them ever pops out of the computer related to what he did) and never see the light of day doesn't mean that in many embodiments that the results would. In fact, there are probably very many embodiments where Benson's results would be printed. Also, be clear, you could also keep the results of this instant method inside a computer forever (and even never print an image too). In fact, modern day embodiments (probably like the one microsoft is using that allegedly infringes) probably do keep the result inside the computer. Halftoning isn't just something done for printing, although it was originally, it is now done as a method of analysing images etc. Sometimes by automated means. You know those people that mess around on a computer to help make an image clearer on their computer in cop shows? Halftoning is something they might use. It's really just "signal processing". The fact that one use of it is in printing on (especially) old-style printers is neither here nor there. Just the same as one use of Benson's method might very well be in printing on (especially) old-style printers was neither here nor there at that time.

The only, and I do mean only, thing that distinguishes Benson's facts from the facts in this case is that benson at least tried, in a token effort, to tie his method to a "barrel shifter", aka a concrete piece of hardware. Excepting of course that Benson and this case present different math performed. And guess what? That only real distinction weighs even heavier against the claim in this case.

Guess what distinguishes this case from Flook? Nothing except different math performed and the field of use. Where, I note, that the field of use did nothing to save Flook's claim just the same as the field of use, printing, or post-solution activity, actually printing a sheet of paper, or displaying an image, should not be permitted to save this claim.

[6]

Oh, and just so we're clear, the only thing that officially saved this claim was, and I paraphrase, "the court didn't see anything abstract about the claim".

It had nothing to do with the use saving the abstract idea as it being "applied". It had nothing to do with the unlikelyhood of a claim being so abstract as to be outside the realms of Rader's fantasy patent realm. Or, for that matter, any of the other nonsense Rader attempted to fall back on to make himself feel better for his inability to construe a claim in light of the facts before him, and realize that it is, indeed, all math.

I used to think there might have been a pretty bad problem with patent law. But it's getting clearer and clearer by the day that the worst malady, and probably, if you get right down to it, the only real problem, which the patent system has is the Federal Circuit or perhaps their loose tongue, or the way people interpret the Federal Circuit. But in any event, all problems of note seem to have originated from them, either in the form of carelessness, see strict TSM and the instant decision, or in the form of what can only appear to an objective observer to be deliberate maliciousness, see for instance the repeal of the long standing business method prohibition and repeal of the functional claiming general "rules". But also including that patent prosecution is so complicated now that your avg examiner doesn't really have a chance in heck in properly presenting the lion's share of their rejections.

[David Boundy]

The Supreme Court always sits en banc. For courts that always sit en banc, the most recent decision controls, not the earlier.

Remember the key sentence in Diamond v. Diehr:

Our recent holdings in Gottschalk v. Benson and Parker v. Flook both of which are computer-related, stand for no more than these long-established principles

- Excluded from patent protection are laws of nature, natural phenomena, and abstract ideas.

- "An idea of itself is not patentable,"

- "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right."

Whatever Benson might have stood for originally with respect to claim 8 (which wasn't mentioned in the body of the opinion), it doesn't stand for that now.

[6]

"Whatever Benson might have stood for originally with respect to claim 8 (which wasn't mentioned in the body of the opinion), it doesn't stand for that now. "

Lulz, it always did stand for the exact same thing as it did the day of Diehr and that it does today.

Could you kindly learn to read in context Boundy?