It strikes me that there is some backsliding taking place by judges of the Federal Circuit in what boils down to their using a ”gist of the invention” test. You saw it most recently in the opinion of Judges Dyk, Bryson, and Prost in Cybersource to assess patent eligible subject matter where they said:
Regardless of what statutory category (”process, machine, manufacture, or composition of matter,” 35 U.S.C. sec. 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.
Cybersource v. Retail Decisions, slip opinion at page 17 (Fed. Cir. Aug. 16, 2011)
In the Cybersource opinion, the panel essentially rewrote the article of manufacture claim (i.e., Beauregard claim) into a method claim so as to find the claim ineligible subject matter as reciting a mental process. The panel rationalized that the gist of the invention was an abstract idea, as informed by the panel’s interpretation of the method claim, and therefore the article of manufacture claim should be analyzed similarly — regardless of whether that analysis required one to disregard express claim language.
What may come as a surprise to many is that there was a similarly unsettling suggestion by Chief Judge Rader in the oral argument of Research Corporation Technologies v. Microsoft in his suggestion that one could just look to the subject matter of the specification as a test to determine patent eligibility, as opposed to looking to the express language of the particular claim at issue. In that oral argument, Chief Judge Rader had the following colloquies with the patentee’s counsel and defendant’s counsel, respectively: [Listen] and [Listen]. Judge Rader seemed to be suggesting (at least for purposes of discussion during that pre-Bilski oral argument) that the patent eligibility of the invention be gauged from the specification in order to assess section 101, rather than assessing the actual text of each claim on a claim by claim basis. At the end of the day, the Research Corporation Technologies panel did not adopt such a test.* Had they done so, it would have been just as troubling as what the Cybersource panel has done in re-writing Beauregard claims as method claims for purposes of assessing patent eligibility.
It is interesting to see that one of the court’s newest members, Judge O’Malley, wrote the following as part of her dissent in Ormco v. Align, a case she sat on by designation when she was a district court judge:
This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (”It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.’”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)). Indeed, this court has done so quite forcefully and quite recently. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330-31 (Fed.Cir.2007) (”We sympathize with the district court’s choice, since 1323*1323 we agree that [the feature] is an essential element of the invention. . . . However, we cannot endorse a construction analysis that does not identify `a textual reference in the actual language of the claim with which to associate a proffered claim construction.’”) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.Cir. 1999)). Simply stated, “automatic determination of finish tooth positions without human adjustment of the final results” is a limitation that the majority has amalgamated from the specification of one of the patents in suit without reference to the specific language of any claim of any of the patents.
While Judge O’Malley’s comment was directed to claim construction, it reflects an underlying principle in patent law articluated by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S.336 (1961) (also known as Aro I) that is worth noting, namely that a patent claim covers the totality of the elements of the claim. The Supreme Court in Aro I stated:
For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:
“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”
320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:
“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”
Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).
As the Federal Circuit struggles with the proper test to apply post-Bilski, it should keep this principle in mind. Each claim should stand on its own merits (i.e., its claim limitations as a whole) for purposes of patent eligibility, rather than relying on the gist of the invention. This would avoid the temptation to import the gist of the invention from related claims or to try to divine the invention from the specification.
You can listen to the entire oral argument of Research Corporation Technologies, Inc. v. Microsoft Corp. [here].
You can listen to the oral argument of Cybersource Corp. v. Retail Decisions [here].
*A more careful reader than I brought to my attention the portion of Judge Rader’s opinion where he states:
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.
It is important to realize that only three claims from the ’310 and ‘228 patents were under review in the case for purposes of subject matter ineligibility. Those claims recited the following:
Claims 1 and 2 of the ‘310 patent:
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.
2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.
Claim 11 of the ‘228 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.
So, Judge Rader’s reference to “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” is a reference to claim language in claims other than the claims at issue; because, claims 1, 2, and 11 listed above recite none of those elements.