If a patent claim only covers an abstract idea, it does not define patentable subject matter but if the claim is narrower, such as one defining a machine or describing a transformation of data, then the claim does come within the purview of the Patent Statute. The boundaries of what is or is not an abstract idea are currently fluid. See the Supreme Court case of Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). The Federal Circuit Court of Appeals, in Research Corp. v. Microsoft Corp, Case No. 2010-1037 (Fed. Cir. Dec. 8, 2010)(available here), stated “The Supreme Court did not presume to provide a rigid formula or definition for abstractness.” Slip opn. p. 14 (herein “Research P. 14″), citing Bilski, 130 S.Ct. at 3236 (The Court has “never provide[d] a satisfying account of what constitutes an unpatentable abstract idea.” (Stevens, J., concurring)). In the absence of a formula or definition, it is often difficult to identify the contours of an abstract idea and what is or is not patentable subject matter under 35 U.S.C. § 101. The Research Corp. case and Prometheus Lab. Inc. v. Mayo Collaborative Serv., Case No. 2008-1403 (Fed. Cir. Dec. 17, 2010)(available here), provide some guidance. With guidance from Judge Rich of the Federal Circuit who stated “the name of the game is the claim,” the language in the claims is critical. Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990).
The Patent Statute provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”
35 U.S.C. § 101. The Research Corp Court stated that: “The Supreme Court has articulated only three exceptions to the Patent Act’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’” Research P. 13, citing Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). The accused infringer in Research Corp asserted that the following claims, related to the processing of digital image data, were only abstract ideas and therefore not patentable subject matter. The Federal Circuit held that the following claims in Research Corp for the ’310 patent and the ’228 patent (see note 1 below) defined patent-eligible subject matter .
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. (’310 patent)
2. The method of claim 1, wherein said blue noise mask is used to halftone a color image. (’310 patent)
11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color 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 provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks. (’228 patent)
In Research, the Federal Circuit stated:
With that guidance, 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 and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act. In that context, this court processes claimed in the ’310 and ’228 patents. The ’310 and ’228 patents claim methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask. The invention presents functional and palpable applications in the field of computer technology. These inventions address “a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering.” ’310 patent col.3 ll.33-40. The fact that some claims in the ’310 and ’228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. Indeed, this court notes 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.This court also observes that the claimed methods incorporate algorithms and formulas that control the masks and halftoning. These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context.
Research Pp. 14-15.
The patent claims in play in Prometheus (see Note 2 below) were:
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject. (Claim 1 of the ‘623 patent).
46. A method of optimizing therapeutic efficacy and reducing toxicity associated with treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) determining the level of 6-thioguanine or 6-methylmercaptopurine in a subject administered a drug selected from the group consisting of 6-mercaptopurine, azathiop[u]rine, 6-thioguanine, and 6-methyl-mercaptoriboside, said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject, and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells or a level of 6-methylmercaptopurine greater than about 7000 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject. (Claim 46 of the ‘302 patent).
The Federal Circuit in Prometheus stated: “In our pre-Bilski decision in this case, we held not only that Prometheus’s asserted claims recite transformative ‘administering’ and ‘determining’ steps, but also that Prometheus’s claims are drawn not to a law of nature, but to a particular application of naturally occurring correlations, and accordingly do not preempt all uses of the recited correlations between metabolite levels and drug efficacy or toxicity.” Prometheus P. 14. As a result, the Federal Circuit again approved Prometheus’ claims to define patentable subject matter.
More than a century ago, the Supreme Court addressed the limits of the abstract idea test in a case involving Samuel Morse’s telegraph patent. O’Reilly v. Morse, 56 U.S. 15 How. 62 (1853). Notwithstanding its age, the Supreme Court in Bilski v Kappos cited with approval the 1853 Morse case. The Court in that case found that one of Morse’s patent claims, using electromagnetism for writing at a distance, would preempt a wide swath of technological developments and was not patentable. Morse claimed: “the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.” This claim was too broad and would preempt the entire technical field without regard to the machinery associated with the process. The Court rejected the patent claim due to preemption of an entire field of technologic advances. However, the Court approved other Morse patent claims, one of which claimed: “the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, substantially as herein set forth and illustrated, in combination with machinery for recording them, as signals for telegraphic purposes.”
These cases highlight the importance of defining in a patent claim either data transformation elements or machine related aspects of an invention. Further, litigators need to present the “functional and palpable application [of the invention] in the field” and the “need in the art for a method of and apparatus” of the invention. See Research Pp. 14-15.
Note 1: The patents in Research were: U.S. Patent Nos. 5,111,310 (“’310 patent”); 5,341,228 (“’228 patent”); 5,477,305 (“’305 patent”); 5,543,941 (“’941 patent”); 5,708,518 (“’518 patent”); and 5,726,772 (“’772 patent”).
Note 2: The patents in Prometheus were: U.S. Patent Nos. 6,355,623 (“‘623 patent”) and 6,680,302 (“‘302 patent).