Yesterday, the Federal Circuit released its opinion in Research Corp. v. Microsoft. Research Corp. continues a trend at the Federal Circuit of emphasizing the role of the written description requirement of 35 U.S.C. §112 in analyzing validity of pending or issued patent claims. The case illustrates how §112 and the subject-matter eligibility requirement of 35 U.S.C. §101—famously discussed by the Supreme Court in Bilski—address two sides of the “abstractness” coin.
The claims at issue relate to digital imaging methods for gray scale halftoning and halftoning of color images. The district court had granted summary judgment finding the asserted claims invalid under § 101. In the panel decision authored by Chief Judge Rader, the Federal Circuit reverses summary judgment and in doing so provides some useful guidance on “post-Bilski” analysis of subject-matter eligibility for inventions under 35 U.S.C. §101.
Interestingly, the opinion does not address or use the machine or transformation test, and neither party alleged that the inventors were claiming laws of nature or physical phenomena. Rather, the claims’ validity under §101 was founded solely on the Federal Circuit finding that the claims were not abstract after carrying out an analysis highly favorable to the patentee.
For instance, the opinion notes that, “section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent” and 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 court declines to define “abstract” beyond noting that abstractness should be “manifestly” exhibited, but notes that in this case the invention “presents functional and palpable applications in the field of computer technology.” The court goes on to find the method and apparatus claims directed to patent-eligible subject matter.
Some district court decisions and decisions on cases pending at the U.S. Patent and Trademark Office have relied on “abstractness” as a path to finding claims directed to computer-related inventions ineligible under 35 U.S.C. §101. Thus, the Research Corp. decision may temper some of those validity/patentability attacks.
Another important aspect of the case is how the court goes out of its way to discuss the written description requirement of §112, even though there was no §112 validity challenge. The opinion refers to abstractness not only as a §101 problem, but as “a disclosure problem” addressed under §112. In the §101 analysis, the court describes §112 as providing “powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention” and notes that, “an invention which is not so manifestly abstract as to override the statutory language of section 101 may nonetheless lack sufficient concrete disclosure to warrant a patent.”
Method claims must not be, as stated in the opinion, “so conceptual that the description does not enable a person of ordinary skill in the art to replicate the process.” In light of Research Corp., it remains critical to include a truly enabling disclosure for method and other claims along with sufficient detail showing that the claims are directed to “specific applications or improvements to technologies in the marketplace.”