Another interesting aspect of the recent Fuzzysharp v. 3DLabs oral argument was the attention paid to the Research Corp. Technologies v. Microsoft case decided back in December 2010. In that case, Chief Judge Rader wrote for the court:
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 render-ing.” ’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. The Supreme Court has already made abundantly clear that inventions incorporating and relying upon even “a well known mathematical equation” do not lose eligibility because “several steps of the process [use that] mathematical equation.” Diehr, 450 U.S. at 185. Indeed, the Supreme Court counseled:
In determining the eligibility of respondents’ claimed process for patent protection under section 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.
Id. at 188. Borrowing from the reasoning of the Supreme Court in Diehr, this court observes that the patentees here “do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of” halftoning in computer applications. Id. at 187. Moreover, because the inventions claimed in the ’310 and ’228 patents are directed to patent-eligible subject matter, the process claims at issue, which claim aspects and applica-tions of the same subject matter, are also patent-eligible.
Refreshingly, Judges O’Malley and Reyna noted that Research Corp. is precedent and therefore must be followed. Judge O’Malley first commented: [Listen]. Indeed, she commented that in view of Research Corp. abstract ideas are only to be found in the most rare of circumstances, essentially: [Listen].
And, Judge Reyna later added this comment: [Listen].
It has already been more than six months since Research Corp. was decided. The Federal Circuit has noted that it is precedent that must be followed. Will the PTO’s Subject Matter Eligibility Guidelines committee follow suit with updated guidelines?