Coffelt v. NVIDIA Corp. (C.D. Cal. 2016)

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

Comments

[MaxDrei]

Presumably, had the specification been written post_Alice, it would have explained how the claimed subject matter is a technical feature combination which solves a problem in technology ie the essence of what ought to be patentable.

That would have made it harder to dismiss the claim as ineligible.

My suggestion is that, after the present period of hiatus, drafters will figure out what needs to be included in the specification, to get over the eligibility hurdle, for any given subject matter.

[skeptical]

You have been Gisted.

[skeptical]

MaxDrei,

The "technical qua technical" is NOT "what ought to be patentable" to the exclusion of other things, vis a vis, the United States sovereign DIFFERENCE between useful arts and the European style "technical arts."

When we discuss US law, it is rather critical to remember this and to NOT engage in the type of "glossing" that your post would do.

In other words, your post is NOT helpful in that it tries to make it sound acceptable an item discussing US law that WOULD BE acceptable had the discussion occur in the EPO.

Thank you for refraining from being unhelpful in the future.

(and whether that choosing to NOT be unhelpful would actually happen, well, I do remain...

[Paul Cole]

The background circumstances are of some interest.

The patent application which matured into the patent in issue was filed by Mr Coffelt personally and not through an attorney or agent, and was also prosecuted through to grant by him personally. There is no European equivalent, so that it is not possible to see how the EPO would have reacted to the claimed subject matter. In the background section there is some reference to prior art limitations in calculating shadows and reference to eclipses, so that there could be basis for definition of a technical problem. Whether the claim contains sufficient to solve the problem is not immediately clear, and the EPO would very probably have made similar objections to the US court.

The claims are a paradigm example of failure to follow through all the human activities that flow from the invention. The invention is not really about calculating pixel colors for a geometric graphic object but about better displaying the object, especially where it may be partly hidden or illuminated perhaps only by indirect light. A claim to a method of displaying an object comprising receiving spatial data for the object, receiving background data, calculating pixel brightness for the object, and feeding the calculated pixel data for the object to a display would have been considerably less abstract.

It is difficult to see the new function or result achieved by the claimed method. Life is too short to work through the somewhat complex maths in the specific description. But what did things look like before the invention, and what do things look like with the benefit of the invention? A pair of side by side images would do much to make things more convincing.

On the whole, the result is unsurprising and contributes little new from a legal standpoint.

[skeptical]

A little more on that "You've been Gisted" comment...

I am (not) amused anytime I see a claim term "Gisted" away with the notion of "directed to" and I am reminded of this single cartoon frame:

http://xkcd.com/1425/

After all, any enforcement of the claimed invention still would need to make sure that the "All Elements" rule was satisfied (so why is it permissible to make an element disappear when applying this non-statutory "101"** rule?

Bottom line of the cartoon is that it is just not the same to take some claimed action and insert a human in place of a computer. A computer is a technical thing and should not be viewed as somehow merely a proxy for a human mind. Claims (such as this one which is explicit) that are so clearly NOT directed to a human mind should not be mashed (like a nose of wax) to allow the insertion of the (unnamed) Nuevo Mental Steps doctrine.

**101 in quotes, since this being non-statutory, the Supreme Court could also have picked a random chapter (like 103 or 112). Wait, their "logic" sounds more in either 103 or 112 - and was not 103 explicitly created in replacement of the Court's attempts at "Gist of the Invention"...?

That last question is rhetorical as anyone halfway cognizant of patent law history knows the answer to that question. The real question is why is the Court not respecting this history, and why is Congress sitting on its duff and allowing the Court to disrespect its prior work?

Answers to those questions, especially the latter one, have to do with the sense of Big Corp "voices" capturing the government process.