Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) (RADER, Newman & Plager) ResearchCorp12082010
In an early response to Bilski v. Kappos, 130 S. Ct. 3218, CPLRG 0015 (2010), the Federal Circuit, in an opinion by Chief Judge Rader, rebuffed a Section 101 challenge to claims in two patents to methods of “digital image halftoning.” The court indicated a reluctance to find the kind of abstractness that the Supreme Court relied upon in Bilski to reject claims as ineligible subject matter under Section 101. The court suggested that it would be more fruitful to apply specific standards of patentability, such as indefiniteness and lack of written description under 35 U.S.C. Section 112.
The struggle to make sense out of Bilski continued in subsequent Federal Circuit decisions. See, e.g., Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, CPLRG 0071 (Fed. Cir. 2010), on remand from 130 S. Ct. 3543 (2010), cert. granted, 180 L. Ed. 2d 844 (June 20, 2011); Ass’n for Molecular Pathology v. United States Patent and Trademark Office, CPLRG 0073 (Fed. Cir. July 29, 2011); Cybersource Corp. v. Retailed Decisions, Inc., CPLRG 0074 (Fed. Cir. Aug. 16, 2011).
Patents: Digital Imaging; “Blue Masks.” The patents at issue concerned “digital image halftoning.” U.S. Pat. No. 5,111,310; U.S. Pat. No. 5,341,228. USPatNo5111310
USPatNo5341228 The claims implemented certain “blue masks” used in computer generation of digital color and black-and-white images.
Claims. Three asserted claims were as follows:
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.
2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.
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.
Not Abstract; Functional Applications. Reversing a district court decision to the contrary, the court held that the subject matter of the claimed processes did not fail for abstractness. The invention had “functional and palpable applications” in computer technology. Some claims required hardware, such as film, memory and a display. The claimed methods used “algorithms and formulas that control the masks and halftoning,” but these “do not bring this invention even close to abstractness that would override the statutory categories and context.”
Restrictive Approach to Bilski. In Research Corp. Technologies, Chief Judge Rader threw down a generally restrictive approach to Bilski abstractness: “[T]his 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.”
Section 112. Judge Rader cautioned that Section 112 contained “powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention”:
Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite because the invention would “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.” Star Scientific., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008). That same subject matter might also be so conceptual that the written description does not enable a person of ordinary skill in the art to replicate the process.