On December 8, 2010, the Fed. Cir. (Rader writing) reversed the district court’s holding that claims to a process for rendering a half-tone image of a digital image were patent ineligible as an attempt to claim an abstract idea. Research Corp. Technologies, Inc. v. Microsoft Corp., 2010-1037 (Fed. Cir. Dec. 8, 2010). (A copy is at the end of this post.) The claims given in the opinion involved the use of an “improved blue noise mask.” The panel spent 10 pages of its 25 page opinion explaining the technology and reproducing claims, and I still don’t have a clue how this technology works (it involves use of an algorithm as well!). The main process claims quite clearly would fail the M or T test, but the courts have more to work with now, and the panel got right to work.
Not surprisingly, the panel had a lot to say about the Supreme Court’s Bilski decision, particularly what it left unsaid:
“Indeed, the Supreme Court in Bilski re-focused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract. The Supreme Court did not presume to provide a rigid formula or definition for abstractness [citation omitted]. Instead, 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.”
In other words, no more rigid rules like M or T. But Judge Rader is up to the challenge:
“With that guidance, this court will also 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 [set forth in 101] and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act. [101 says that the various categories of invention or discovery are patent-eligible ‘subject to the condition and requirements of this title.’].”
As Rader put it: “In other words, section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent.” Rader continues:
“In that context, this court perceives nothing abstract in the subject matter [of the claimed processes…The invention presents functional and palpable applications in the field of computer technology.” Rader goes on to provide some new clues [my term] for non-abstractness – computer subunits present in dependant claims and the fact that the invention represents a “specific [application] or [improvement] to [a technology] in the marketplace.”
The opinion is most intriguing in its endorsement of the of 112 as containing “powerful tools to weed out claims” that are “sufficient to pass the coarse eligibility filter [of 101 but are ‘invalid as indefinite….That same subject matter might also be so conceptual’ [ed.’s note: this mirrors the PTO’s Bilski Guidelines] that the written description does not enable a [POSA] to replicate the process [ed.’s note: Is this conflation of the WDR and the enablement requirement by Judge Rader a purposeful joke?].”
In the end, the panel found a process claim that failed the M or T test sufficiently non-abstract to not fall into the Supreme Court’s “abstract idea” trash can of patent ineligibility. This decision also buttresses the Ariad v. Lilly decision that held that claims to a method comprising simply “altering NF-kB activity” in cells so that the NF-kB effects of “external influences” on the cell are “mediated” fails the written description requirement of 112(1). Put another way, perhaps the court feels that this elevation of the importance of the WDR is further justified if it is needed to weed out claims that slip past 101. (For background, see my post of April 13, 2009, which discusses claim 80 of the ‘516 patent.)
Presumably, if presented with similar claims in the future, the Fed. Cir. might (a) find such “mechanism of action claims” that do not even recite administration of an active agent too conceptual to pass the “coarse filter” of 101, or (b) might let the claims make the cut of 101 and then find them lacking under 112. I will not make a prediction in this post.
Interestingly, Judge Rader did not revisit his dissent in Bilski, which virtually was cloned as the majority opinion of the Supreme Court. I wonder if he regrets finding the Bilski claims not patent-worthy as “abstract ideas” while at the same time suggesting that they would manifestly fail 102. The same “powerful tools” of the Patent Act were at hand for the PTO and the Ariad court. Bilski’s claims were not so abstract that they should have been caught in the coarse filter of 101. Having led us into the “Swamp of Abstraction,” perhaps Judge Rader is trying to lead us back out!