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Federal Circuit reviews "abstract" exception to patent-eligible subject matter

December 28, 2010
Post by Blog Staff

The Federal Circuit recently revisited the issue of patentable subject matter under § 101 of the Patent Act in light of the Supreme Court’s Bilski decision. In Research Corporation Technologies, Inc. v. Microsoft Corporation, the Federal Circuit determined that the claimed methods relating to half-toning digital images were not abstract and satisfied the requirements of § 101. This appears to be a very patent-friendly decision. It does not employ the machine-or-transformation test, but instead requires that a claim be manifestly abstract before it is determined to be invalid as an exception to the broad categories of patent-eligible subject matter identified by § 101.

More details of Research Corporation Technologies, Inc. v. Microsoft Corporation after the jump.

The technology at issue generally relates to methods for displaying digital images. An example claim from the patent is shown below:

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.

In its Bilski decision, the Supreme Court identified three categories of innovations that would not be eligible for patent protection: abstract ideas, natural phenomena, and laws of nature. The Supreme Court rejected the Federal Circuit's proposed machine-or-transformation test as the exclusive test for patent-eligible subject matter, but indicated that it was still a valuable tool in analyzing the issue. In determining whether the halftoning claims at issue in the present case were appropriate subject matter for patent protection, the Federal Circuit did not utilize the machine-or-transformation test. Instead its methodology was to first look at whether the claimed invention nominally fell within the scope of § 101. Since the claim recites a “method” and method is included within the definition of “process,” the claim facially falls within the subject matter of § 101. The Federal Circuit then looked to see whether despite nominally satisfying § 101, the claims were nonetheless excluded from § 101 by one of the three exceptions identified by the Supreme Court.

The court noted that there was no doubt that the claimed invention was not directed to a law of nature or physical phenomenon. Therefore, the case turned on whether the purported method was merely an abstract idea. The court refused to create a detailed test for whether an invention was abstract, saying:

[T]he court 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.

The court went on to say that the subject matter of the claims at issue was not so manifestly abstract as to override the statutory category. In particular the court stated that “[t]he invention presents functional and palpable applications in the field of computer technology.” Furthermore, “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.”

The court stressed that simply because a claimed invention is not so abstract as to fall outside of § 101 does not mean that the claim is valid. In addition to prior art concerns, § 112 provides a tool to “weed out claims that may present a vague or indefinite disclosure of the invention.”

The court also looked at the issue of who has the burden of establishing the right to claim priority to an earlier-filed patent application. In this case, Research Corporation Technologies claimed that the burden was on Microsoft to establish that the claims were not supported by the earlier-filed application. The court determined that the burden is on the patent owner to establish that the claims of the later filed patent are supported by the earlier application from which priority is claimed.


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