i4i sued Microsoft Corp. for willful infringement of a patent. The Patent Act provides patentees with a presumption of validity under 35 U.S.C. 282. Since 1984, the Federal Circuit has read §282 to require a defendant seeking to overcome the presumption to persuade the factfinder of its invalidity defense by clear and convincing evidence.
Microsoft sought to change the presumption of validity. Instead of a "clear and convincing" standard, Microsoft proposed instead using a "preponderance of the evidence" standard. This would have, in effect, weakened or reduced the value of all issued U.S. patents.
More particularly, more than a year before filing its patent application, i4i had sold a software program known as S4 in the United States, but they disagreed over whether that software embodied the invention claimed in i4i’s patent and therefore invalidated the patent. Relying on the undisputed fact that the S4 software was never presented to the Patent and Trademark Office (PTO) during its examination of the patent application, Microsoft objected to i4i’s proposed jury instruction that the invalidity defense must be proved by clear and convincing evidence. The District Court nevertheless gave that instruction and rejected Microsoft’s alternative instruction proposing a preponderance of the evidence standard. The jury found that Microsoft willfully infringed the i4i patent and had failed to prove the patent’s invalidity. The Federal Circuit affirmed, relying on its settled interpretation of §282.
The Supreme Court rejected Microsoft’s contention that a defendant need only persuade the jury of a patent invalidity defense by a preponderance of the evidence. The Supreme Court stated that where Congress has prescribed the governing standard of proof, its choice generally controls. They went on to reason that while §282 includes no express articulation of the standard of proof, where Congress uses a common-law term in a statute, the Court assumes the “term . . . comes with a common law meaning.” Safeco Ins. Co. of America v. Burr, 551 U. S. 47, 58. Here, by stating that a patent is “presumed valid,” §282, Congress used a term with a settled common-law meaning.
The Supreme Court also rejected Microsoft’s argument that a preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process. The Court stated that it is true enough that, in these circumstances, “the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim—seems much diminished,” KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 426, though other rationales may still animate the presumption. But the question remains whether Congress has specified the applicable standard of proof. As established, Congress did just that by codifying the common-law presumption of patent validity and, implicitly, the heightened standard of proof attached to it.
There is a good reason for the strong presumption of validity that the "clear and convincing" standard provides. When an inventor files a patent application, they give up trade secret rights before ever knowing if they will obtain patent rights. This is a good result for patent holders and a bad result for infringers and alleged infringers.
04 June 2011
Post-Bilski Case, RCT v. Microsoft Corp.
This case is significant because the Federal Circuit took a broad view of patent eligible subject matter in a post-Bilski case. This case involved patents related to digital image. Some of the claims didn't outright specify hardware items.
In this case, Research Corporation Technologies, Inc. (“RCT”) initiated an action against Microsoft Corporation (“Microsoft”), alleging infringement of six related patents: U.S. Patent Nos. 5,111,310; 5,341,228; 5,477,305; 5,543,941; 5,708,518 (“’518 patent”); and 5,726,772. The United States District Court for the District of Arizona held that certain claims of the ’310 and ’228 patents were invalid under 35 U.S.C. § 101.
RCT’s six patents relate to digital image halftoning. Digital images are, in fact, thousands of pixels arranged in arrays of rows and columns. Each pixel in a black-and- white image contains information about the gray level of the image at that particular position. A black-and-white image can have 256 shades of gray. A gray level 1 repre- sents black and a gray level 256 represents white, with intervening numbers representing various shades of gray. For color images, a computer creates separate color- specific arrays of pixels, one array for each primary color. A color-specific array has pixels containing information about the shade level of that color at that particular position.
Digital images often show shades of gray and even a spectrum of colors. Nonetheless, computer displays and printers can only use a limited number of primary colors to display these digital images. Halftoning bridges this gap by simulating a continuous tone image through the use of dots. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixel colors. These techniques place the dots of primary colors in a formation that gives the viewer the illusion of many more shades of gray or varying colors.
Asserted claims 1 and 2 of the '310 patent recited:
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.
Note that no computer or computer hardware was specified in these claims.
The Federal Circuit noted that the Patent Act of 1952 sets forth the categories of subject matter eligible for patent protection:
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 Federal Circuit noted that section 101 emphasizes that “any” subject matter in the four independent categories and “any” improvement in that subject matter qualify for protection. The Supreme Court recently reemphasized the significance of these broad statutory categories with the broadening double “any” exhortation as well. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).
The Federal Circuit also noted that the section 101 patent-eligibility inquiry is only a threshold test. The Supreme Court recently emphasized this statutory framework and faulted the Federal Circuit's “machine or transformation” test for eligibility as nonstatutory. In refocusing the eligibility inquiry on the statute, the Supreme Court advised that section 101 eligibility should not become a substitute for a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35. In other words, section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent.
The Federal Circuit went on to state that, with that guidance, the 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, the Federal Circuit perceived nothing abstract in the subject matter of the 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.” 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.
The Federal Circuit also observed 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, did not bring this invention even close to abstractness that would override the statutory categories and context.
In view of this decision, it seems that few software-based inventions will be considered to be too abstract for the Federal Circuit, even if some claims do not specifically recite hardware.
In this case, Research Corporation Technologies, Inc. (“RCT”) initiated an action against Microsoft Corporation (“Microsoft”), alleging infringement of six related patents: U.S. Patent Nos. 5,111,310; 5,341,228; 5,477,305; 5,543,941; 5,708,518 (“’518 patent”); and 5,726,772. The United States District Court for the District of Arizona held that certain claims of the ’310 and ’228 patents were invalid under 35 U.S.C. § 101.
RCT’s six patents relate to digital image halftoning. Digital images are, in fact, thousands of pixels arranged in arrays of rows and columns. Each pixel in a black-and- white image contains information about the gray level of the image at that particular position. A black-and-white image can have 256 shades of gray. A gray level 1 repre- sents black and a gray level 256 represents white, with intervening numbers representing various shades of gray. For color images, a computer creates separate color- specific arrays of pixels, one array for each primary color. A color-specific array has pixels containing information about the shade level of that color at that particular position.
Digital images often show shades of gray and even a spectrum of colors. Nonetheless, computer displays and printers can only use a limited number of primary colors to display these digital images. Halftoning bridges this gap by simulating a continuous tone image through the use of dots. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixel colors. These techniques place the dots of primary colors in a formation that gives the viewer the illusion of many more shades of gray or varying colors.
Asserted claims 1 and 2 of the '310 patent recited:
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.
Note that no computer or computer hardware was specified in these claims.
The Federal Circuit noted that the Patent Act of 1952 sets forth the categories of subject matter eligible for patent protection:
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 Federal Circuit noted that section 101 emphasizes that “any” subject matter in the four independent categories and “any” improvement in that subject matter qualify for protection. The Supreme Court recently reemphasized the significance of these broad statutory categories with the broadening double “any” exhortation as well. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).
The Federal Circuit also noted that the section 101 patent-eligibility inquiry is only a threshold test. The Supreme Court recently emphasized this statutory framework and faulted the Federal Circuit's “machine or transformation” test for eligibility as nonstatutory. In refocusing the eligibility inquiry on the statute, the Supreme Court advised that section 101 eligibility should not become a substitute for a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35. In other words, section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent.
The Federal Circuit went on to state that, with that guidance, the 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, the Federal Circuit perceived nothing abstract in the subject matter of the 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.” 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.
The Federal Circuit also observed 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, did not bring this invention even close to abstractness that would override the statutory categories and context.
In view of this decision, it seems that few software-based inventions will be considered to be too abstract for the Federal Circuit, even if some claims do not specifically recite hardware.
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