{"id":4357,"date":"2011-08-21T13:26:07","date_gmt":"2011-08-21T19:26:07","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=4357"},"modified":"2011-08-22T23:14:56","modified_gmt":"2011-08-23T05:14:56","slug":"backsliding-to-a-gist-of-the-invention-analysis","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=4357","title":{"rendered":"Backsliding to a “Gist of the Invention” Analysis"},"content":{"rendered":"

It strikes me that there is some backsliding taking place by judges of the Federal Circuit\u00a0in\u00a0what boils down to their using a\u00a0“gist of the invention” test.\u00a0 You saw it most recently in the opinion of Judges Dyk, Bryson, and Prost in Cybersource<\/span> to assess patent eligible subject matter where they said:\u00a0<\/p>\n

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.<\/p><\/blockquote>\n

Cybersource v. Retail Decisions<\/span>, slip opinion at page 17 (Fed. Cir. Aug. 16, 2011)<\/p>\n

In the\u00a0Cybersource<\/span>\u00a0opinion, the panel essentially rewrote the article of manufacture claim (i.e., Beauregard claim)\u00a0into a method claim so as to find the claim ineligible subject matter as reciting a mental process.\u00a0 The panel rationalized that the gist of the invention was an abstract idea, as\u00a0informed by\u00a0the panel’s\u00a0interpretation of the\u00a0method claim, and therefore the article of manufacture claim should be\u00a0analyzed similarly — regardless of whether that analysis\u00a0required one to\u00a0disregard express claim language.\u00a0<\/p>\n

What may come as a surprise to many is that there was a\u00a0similarly\u00a0unsettling suggestion\u00a0by\u00a0Chief Judge Rader\u00a0in the oral argument of Research Corporation Technologies v. Microsoft<\/span> in his suggestion that one could just look to the subject matter of the\u00a0specification as a test\u00a0to determine patent eligibility, as opposed to looking to the express language of\u00a0the particular claim at issue.\u00a0 In that oral argument, Chief Judge Rader had the following colloquies with the patentee’s counsel and defendant’s counsel, respectively: [Listen<\/a>] and [Listen<\/a>].\u00a0\u00a0Judge Rader\u00a0seemed to be\u00a0suggesting (at least for purposes of discussion during\u00a0that pre-Bilski\u00a0oral argument)\u00a0that the patent eligibility of the \u00a0invention be gauged\u00a0from the specification<\/span>\u00a0in order to assess section 101, rather than assessing the\u00a0actual text\u00a0of each claim on a claim by claim basis<\/span>.\u00a0\u00a0\u00a0At the end of the day, the Research Corporation Technologies<\/span> panel did not adopt such a test.*\u00a0 Had they done so, it would have been\u00a0just as troubling as what the Cybersource<\/span> panel has done\u00a0in\u00a0re-writing Beauregard claims as method claims\u00a0for purposes of assessing patent eligibility.\u00a0<\/p>\n

It is interesting to see that one of the court’s newest members, Judge O’Malley, wrote the following\u00a0as part of her dissent in Ormco v. Align<\/span>, a case she sat on by designation when she was a district court judge:<\/p>\n

\n

This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., <\/em>Allen Eng’g Corp. v. Bartell Indus., Inc.,<\/em> 299 F.3d 1336, 1345 (Fed.Cir.2002)<\/span><\/a> (“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.,<\/em> 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)<\/span><\/a>). Indeed, this court has done so quite forcefully and quite recently. See <\/em>MBO Labs., Inc. v. Becton, Dickinson & Co.,<\/em> 474 F.3d 1323, 1330-31 (Fed.Cir.2007)<\/span><\/a> (“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.,<\/em> 175 F.3d 985, 990 (Fed.Cir. 1999)<\/span><\/a>). 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<\/em> claim of any<\/em> of the patents.<\/span><\/p>\n<\/blockquote>\n

While Judge O’Malley’s comment was directed to claim construction, it reflects an underlying principle in patent law articluated\u00a0by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Co.<\/span>, 365 U.S.336 (1961) (also known as Aro I<\/span>)\u00a0 that is worth noting, namely that a patent claim covers the totality of the elements of the claim.\u00a0 The Supreme Court in Aro I<\/span> stated:<\/p>\n

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,<\/em> 320 U.S. at 320 U. S. 667<\/span><\/a><\/span>; 320 U.S. at 320 U. S. 684<\/span><\/a><\/span>. [<\/span><\/a>Footnote 10<\/span><\/span><\/span><\/span><\/a>] 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<\/em> 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,<\/em> the Court said:<\/span><\/span><\/span><\/p>\n

“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.”<\/span><\/span><\/span><\/p>\n

320 U.S. at 320 U. S. 667<\/span><\/a><\/span>. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra,<\/em> the Court said:<\/span><\/span><\/span><\/p>\n

“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.”<\/span><\/span><\/span><\/p>\n

Aro Mfg. Co., Inc. v. Convertible Top Co.<\/span>, 365 U.S. 336, 344-45 (1961).<\/p><\/blockquote>\n

As the\u00a0Federal Circuit\u00a0struggles with\u00a0the proper test to apply post-Bilski, it should keep this principle in mind.\u00a0 Each claim should stand on its own merits (i.e., its claim limitations as a whole)\u00a0for purposes of patent eligibility, rather than relying on the gist of the invention.\u00a0 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.<\/p>\n

\u00a0<\/p>\n

You can listen to the entire oral argument of Research Corporation Technologies, Inc.\u00a0v. Microsoft Corp.<\/span>\u00a0[here<\/a>].<\/p>\n

You can listen to the oral argument of Cybersource Corp.\u00a0v. Retail Decisions<\/span> [here<\/a>].<\/p>\n

————————————————————————————————–<\/p>\n

Updated 8\/22\/11:<\/span><\/p>\n

*A more careful reader than I brought to my attention the portion of Judge Rader’s opinion where he states:<\/p>\n

\n

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. <\/span>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.<\/span><\/strong> 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.<\/span><\/span><\/p>\n<\/blockquote>\n

It is important to realize that only three claims\u00a0from the\u00a0‘310 and ‘228 patents were under review in the case for purposes of\u00a0subject matter ineligibility.\u00a0 Those claims\u00a0recited the following:<\/span><\/p>\n

Claims 1 and 2 of the \u2018310 patent:<\/span><\/p>\n

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.<\/span><\/p>\n

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.<\/span><\/p>\n

\u00a0<\/span><\/p>\n

Claim 11 of the \u2018228 patent:<\/span><\/p>\n

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.<\/span><\/p>\n

So, Judge Rader’s reference to\u00a0<\/span>“high contrast film,” “a film printer,” “a memory,” and “printer and display devices” is a reference to claim language in claims\u00a0other than the claims at issue; because, claims 1, 2, and 11 listed above recite none of those elements.<\/span><\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

It strikes me that there is some backsliding taking place by judges of the Federal Circuit\u00a0in\u00a0what boils down to their using a\u00a0“gist of the invention” test.\u00a0 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:\u00a0 Regardless of what statutory […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4357"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=4357"}],"version-history":[{"count":23,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4357\/revisions"}],"predecessor-version":[{"id":4380,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4357\/revisions\/4380"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=4357"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=4357"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=4357"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}