United States: Inventions With Specific Improvements To Existing Technologies Are Not Invalid Under 35 U.S.C. § 101

Last Month at the Federal Circuit - January 2011

Judges: Rader (author), Newman, Plager
[Appealed from D. Ariz., Judge Jones]

In Research Corp. Technologies v. Microsoft Corp., No. 10-1037 (Fed. Cir. Dec. 8, 2010), the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment, ruling in favor of plaintiff Research Corporation Technologies, Inc. ("RCT"). Specifically, the Court reversed the district court's entry of SJ invalidating claims in U.S. Patent Nos. 5,111,310 ("the '310 patent") and 5,341,228 ("the '228 patent") under 35 U.S.C. § 101 and denying an earlier filing date to U.S. Patent No. 5,477,305 ("the '305 patent"). The Court affirmed the district court's decision that claims 4 and 63 of U.S. Patent No. 5,726,772 ("the '772 patent") are not entitled to the earlier filing date.

The technology at issue involved printing digital images. Image half-toning simulates continuous image color by the use of dots or pixels. Half-toning allows computers to present many shades and color tones with a limited number of pixel colors. In the case of black-and-white images, printers use only black dots to give the illusion of shades of gray. One technique for producing a digital half-toned image, "thresholding," uses a two-dimensional array called a "mask" populated with predetermined threshold numbers, typically between 1 and 256. This technique compares the gray level at each pixel of the image against the threshold that corresponds to the pixel's position. If the gray level exceeds the threshold, the pixel is turned on and the computer places a "1" in the appropriate memory space. The resulting half-tone image is a two-dimensional array of zeros and ones.

"Dot profiles" can be used to measure the quality of a half-toning process. A dot profile is a half-tone image that would be produced if all pixels were the same shade of gray. A "power spectrum" is a graph that shows the relative frequency of dots in the dot profile at a particular gray level. The shape of the power spectrum characterizes the type of "noise" that a dot profile exhibits. A "blue noise" spectrum, at issue here, exhibits a power spectrum with primarily high frequency components and little low frequency components. The patentees invented an improved blue noise mask that contains unique properties and produces higher quality half-tone images with improved efficiency and economy.

RCT asserted six patents against Microsoft Corporation ("Microsoft"): the '310 patent, the '228 patent, the '305 patent, U.S. Patent No. 5,543,941 ("the '941 patent"), U.S. Patent No. 5,708,518, and the '772 patent. On Microsoft's motion for SJ, the district court held that the asserted claims of the '310 and '228 patents were invalid under § 101. The district court further held that the asserted claims of the '772 patent were not entitled to claim priority to applications filed in 1990 and 1991. Based on the district court's ruling, the parties stipulated to noninfringement for all but a single remaining claim, claim 29 of the '305 patent. The district court then ruled from the bench that claim 29 was not entitled to claim the benefit of the earlier filing date. The parties subsequently stipulated to dismissal of the suit and RCT appealed.

"[I]nventions 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." Slip op. at 15.

Relying on the Supreme Court's decision in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), the Federal Circuit found that the asserted claims were directed to patentable subject matter. The Court found that the claims, on their face, were directed to a "process," falling within the categories proposed by 35 U.S.C. § 101 and the definition of "process" in § 100. Considering whether the claimed invention was directed to abstract subject matter, the Court noted "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." Slip op. at 15. In the Court's view, the patents-at-issue presented "functional and palpable applications in the field of computer technology," and thus were not abstract. Id. Indeed, some claims even included devices and specific computer technology to achieve the process. The Court concluded that the inclusion of algorithms and formulas did not override the statutory categories and context present in the claims.

The Court next considered whether the asserted patents were entitled to an earlier filing date. Although couched in terms of priority, the issue turned on whether earlier applications provided adequate support for the later claims, i.e., whether the written description requirement was satisfied. The claims of the '772 patent are directed to half-tone masks that produce a number of dot profiles, including, but not limited to, the blue noise power spectrum. The district court held that the earlier 1990 and 1991 applications on which RCT sought to rely were limited to blue noise masks. RCT argued on appeal that the 1990 and 1991 applications were not so limited. The Court reviewed the title, specification, and figures of the 1990 and 1991 applications, as well as inventor testimony, and found that the applications disclosed only a blue noise mask. Accordingly, the Court held that the claims-at-issue in the '772 patent were broader than the invention disclosed in the earlier application, affirming the district court's denial of benefit.

Claim 29 of the '305 patent expressly claimed a blue noise mask. Despite this express correlation with the 1990 and 1991 applications, the district court held that claim 29 was not entitled to the benefit of an earlier filing date. The district court further limited the earlier applications to a blue noise mask created according to a specific algorithm recited in a figure. The Federal Circuit found that claim 29 did not require any particular algorithm, or indeed, any process at all, but was rather a "pure apparatus claim." Id. at 24. "Courts must generally take care to avoid reading process limitations into an apparatus claim . . . because the process by which a product is made is irrelevant to the question of whether that product infringes a pure apparatus claim." Id. at 23 (alteration in original) (quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008)). Microsoft sought to rely on LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005), to argue that the 1990 and 1991 applications could support only the creation of a blue noise mask when a particular process was used. The Court found this reliance misplaced because LizardTech involved a method claim. The Court stated that apparatus claims do not need to recite every method of making the claimed apparatus. Thus, in the Court's view, Microsoft improperly tried to mix method and apparatus claims. Finding that the 1990 and 1991 applications provided adequate support for claim 29, the Court accorded claim 29 the benefit of the earlier filings.

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