Bilski to be Expanded in RCT v. Microsoft

While there are at least eight (8) cases before the Federal Circuit that could be the court’s first word on patentable subject matter after the Supreme Court’s Bilski v. Kappos opinion, my prediction is that the first decision to provide additional guidance for computer software will be Research Corp. Tech (RCT) v. Microsoft. Furthermore, I predict that the court will expand/clarify the scope of patentable subject matter to clearly include subject matter that has no realistic application outside of the computer art. There are several reasons for these predictions.

First, while many 101 cases pending before the Federal Circuit were stayed or are not as far along (CyberSource, Fort Properties, DealerTrack, FuzzySharp, and Every Penny Counts), RCT was not stayed. Second, the Prometheus and Classen cases may need additional briefing or oral arguments after the grant-vacate-remands (GVRs) from the Supreme Court. Third, the oral arguments for RCT were held on June 9, 2010, and the judges were Chief Judge Rader, Judge Newman, and Judge Plager. One important thing about the identity of this panel is that both Chief Judge Rader and Judge Newman dissented in the Federal Circuit’s Bilski decision, and more particularly, Judge Rader essentially argued for what the Supreme Court ultimately decided, i.e., that the Bilski claims should simply have been rejected as an abstract idea.

Fourth, while my prediction about the explansion/clarification of the standard is based in part on the composition of the panel, it is also based on the oral arguments in the case. More particularly, Judge Rader’s questions suggested that the “subject matter” of the specification is important to consider, regardless of whether a patent attorney happened to remember to stick a “computer” in the claims or not. To illustrate, it is important to know a few more details about the the RCT case.

Five (5) patents were examined by the District Court, three of which satisfied 101 because of the claimed production of an “image,” in keeping with the In re Abele case. However, two of the patents failed to claim patent eligible subject matter. One representative claim is 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.

Questions by Judge Rader during oral argument seemed to suggest that since the general subject matter of the specification was clearly limited to the computer arts, the failure to mention a “computer” in the claim will not result in the claims being classified as abstract ideas. In other words, even though the District Court suggested that the invalid claimed methods could theoretically be performed by hand, the Federal Circuit may hold that if such performance is not practical as described, there is little risk of abstract idea preemption since the subject matter is accordingly limited to the computer art. Such a conclusion would be very useful since the “display” step of the In re Abele case is not always present in otherwise innovative software advances, such as with transmission instead of displaying or printing.

4 comments to Bilski to be Expanded in RCT v. Microsoft

  • But the idea is abstract. That is image = some calculation over bits of information is the same as compressed file = same calculation over bits of information or hash code = same calculation over bits of information. What a bit means and what the result of any logical or mathematical operation on the bits means is an abstraction. Doing the operation in your head or on paper or on a computer is not different. The scale or speed of application of an idea does not affect the nature of the idea nor its patentability.

    Does anyone believe blocking use of an idea of how to use a computer for 20 years promotes use of the idea? Consider that a new computer process can be conceived, designed and created in minutes. Does 20 years make any sense?

    Patent the computer if you must but not the mathematics or logic that it carries out.

  • >But the idea is abstract.

    The idea is abstract precisely because it is an idea. That is, ideas are abstract by definition. But how can you say that a set of instructions executing on a computer that implement the idea is abstract? Under what definition does this qualify as abstract?

    >Patent the computer if you must but not the mathematics or logic that it carries out.

    Can you clarify what you mean by this? Are you suggesting a patent on the PC that executes the software, rather than a patent on “the software”?

    It’s the software in question that distinguishes this PC from another PC which is not running the software. Which means a patent to *that particular* PC is in some sense a patent on the logic that implements the idea.

    Ideas = abstract. Implementations of ideas by a computer = not abstract.

    >Does anyone believe blocking use of an idea of how to use a computer for 20 years promotes
    >use of the idea? Consider that a new computer process can be conceived, designed and created
    >in minutes. Does 20 years make any sense?

    There are lots of opinions on whether patents *in general* promote the progress. Even more opinions on whether patents *on software* promote the progress.

    Reasonable minds can differ on these two questions. If there are public policy reasons why software should not be patented, then this is important enough to have Congress make the decision rather than the courts.
    Even

  • A method for the halftoning of gray scale images
    In the days before computers, “halftoning an image” was clearly a physical transformation since the image itself was a physical object (film, negatives, prints, etc) and the halftoning itself involved reprinting the image. And so 100 years ago, this clam, as is, would clearly have satisfied the “transformation” test. See US 820,053 “Process for Making Half Tone Enlargements”. http://www.google.com/patents?id=yDdTAAAAEBAJ

    If the court were to hold this claim invalid now because the operation can be done in a computer, then they are saying that advances in the technical arts unrelated to the field of a particular invention (e.g. software) can render previously statutory subject matter (e.g. halftoning an image) unstatutory.

  • stolennomenclature

    I;m sorry, but can someone please explain how society as a whole benefits from a law that serves to limit, restrict or slow down the adoption by society of a clever idea? If someone comes up with a good idea from which people can benefit, surely one would want to speed up and facilitate the adoption of the new idea, not impede it. How does trying to stop something good happening make any sense?
    If people have a strong urge to play music, they will play it – and if they have a strong urge to invent, then they will invent. And if not being able to make a huge load of cash out of an invention stops any particular inventer in their tracks, then sod them – someone else less greedy will come along and invent it.