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IP, Patent

CAFC Prematurely Ends “Bilski” Hunting Season

Was it over before it started? Anti-patent advocates have been watching court filings closely, looking for situations where the Supreme Court’s recent case on patentability of abstract ideas could be used broadly against a class of so-called “software patents.” The Court of Appeals for the Federal Circuit (CAFC), through its Chief Judge Rader, may have put an end to these efforts before they really had a chance to begin.  In addition to identifying claim language the court believed to clearly describe a concrete invention, Judge Rader expressed some telling opinions about how to evaluate patenability post-Bilski.

Microsoft successfully convinced the District Court in Arizona that patents asserted by Research Corporation Technologies (RCT) were too abstract to be patentable, but that decision was overturned last week by a three-judge panel of the CAFC.  Specifically decided was whether the process described in two of RCT’s patents was too abstract (as Dana Blankenhorn would say, the idea of catching mice) or a specific method (continuing with the analogy, a particular mousetrap).  As with any patent analysis, the claim language is key, and is explored in more depth below.  However, far more interesting are Judge Rader’s remarks about how the court would determine if the patents were too abstract.

Essentially, the court referred to the Bilski analysis as a “coarse filter” and expressed a preference to evaluate claims under a different requirement, known to patent types as “definiteness” which asks whether the invention is clearly and distinctly described in the claims.  Notably, Judge Rader refused to define what it means to be “abstract”:

this court also 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

This is far from the more precise test I previously proposed, which was tied more directly to the operation of a claim incorporating an algorithm.  Judge Rader’s message, implicit in his repetition of the phrase “manifestly abstract,” to District Court judges asked to invalidate a patent claimed to be too abstract is basically “Don’t do it.”  (Unless, of course, it is so obviously abstract that it couldn’t possibly fall within the statutory categories.)

Turning next to one of the specific claims at issue, the court’s analysis can be examined further.  Claim 1 of US Patent 5,111,310 recites:

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.

Referring to Blankenhorn’s mousetrap test, the abstractness of this claim can be determined by asking whether this is referring to the idea of halftoning gray scale images, or merely a way of halftoning gray scale images.  The claim can be avoided by designing a process that omits any one of the following:

  • pixel-by-pixel comparison
  • a blue noise mask
  • a random non-deterministic, non-white noise single valued function

While the claim above might have passed muster even under a more stringent test, Judge Rader’s “manifestly abstract” language is meant to discourage lower courts from developing rigid rules, and signals litigants that the Supreme Court might be their only path to actually knocking out an issued patent on eligibility grounds.  In addition, this is only a single case, and there may be additional examples to follow, but at this point the only type of claim that *might* not get past the CAFC would be one the reads like:

A method for the halftoning of gray scale images designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

However, Judge Rader might say that even this claim would pass the “coarse filter” only to be short-circuited by the “definiteness” analysis.  It’s really hard to say, since I have no idea what “manifestly abstract” means … but that’s the idea.  Judge Rader can’t ignore the Supreme Court, but he can set the bar low enough to discourage most would-be challengers.



6 thoughts on “CAFC Prematurely Ends “Bilski” Hunting Season

  1. In the wake of the Bilski patent litigation and the quite-vague opinion issued by the Supreme Court in that case, it’s helpful to obtain a little more clarification from the courts regarding the “abstract idea” exception to patent-eligibility. However, I anticipate that this issue will continue to be litigated, and (hopefully) further clarified, for years to come.

    Posted by patent litigation | December 20, 2010, 3:51 pm
    • Thanks for the comment. I really think the signal from CAFC here is “We really can’t be bothered with 101.” Their opinion in Prometheus is much better (in terms of providing substance, that is — better on the merits is likely in the eye of the beholder!). I’ll have a post up about Prometheus tomorrow … This is an important issue for patent holders, even if ultimately it just drives us all to 112 2d paragraph, in lieu of 101 (as Rader would apparently prefer). SCOTUS may get their hands on a 112 issue next term as well …

      Posted by Patrick | December 20, 2010, 3:59 pm


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