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.