CAFC Provides Further Judicial Guidance on Software Claims

On July 11, 2014, the Court of Appeals for the Federal Circuit decided Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. The issue concerned patent eligibility under 35 USC 101. Digitech’s patent (U.S. Patent No. 6,128,415) includes both “device profile” claims, as well as method claims.

Claim 1 is one of the “device profile” claims:

A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

first data for describing a device dependent transformation of color information content of the image to a device independent color space; and
second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

Claim 10 is a representative method claim:

A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

     generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
     generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and
     combining said first and second data into the device profile.

The Court stated that the above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device (emphasis added). The Court thus concluded that the two data sets and the resulting device profile are ineligible subject matter. “Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. ‘If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory.’” Parker v. Flook, 437 U.S. 584, 595 (1978) (internal quotations omitted).

The patentee argued that the claim was patent eligible because it is “within a digital image processing system.” However, the language relating to “a device in a digital image reproduction system” is included in the preamble as an intended use of the claimed data. The Court held that “a preamble does not limit claim scope if it ‘merely states the purpose or intended use of an invention.’” Therefore, the Court held that it “need not decide whether tying the method to an image processor would lead us to conclude that the claims are directed to patent eligible subject matter…”

The Digitech case should be considered in comparison to Research Corporation Tech. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). In that case, several claims relating to image data processing were accused of failing to comply with 35 USC 101. Representative examples include claim 1 of U.S. Patent No. 5,111,310:

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.

And, claim 11 of U.S. Patent No. 5,341,228:

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 per-form 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.

The decision in that case held that the claims were statutory subject matter under 35 USC 101:

…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.” ’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 applications of the same subject matter, are also patent-eligible.

Admittedly, the Research Corporation Tech. v. Microsoft Corp. decision was handed down before the Supreme Court rendered its decision in Alice Corp. v. CLS Bank. Nevertheless, some differences between the two sets of claims can be noticed. In particular, the Digitech claims are limited to either a database or a method of generating a database. In contrast, the Research Corporation Tech. v. Microsoft Corp. claims relate to halftoning of gray scale images by utilizing a pixel-by-pixel comparison. Accordingly, the application of the process in Research Corporation Tech. v. Microsoft Corp. is more specific than that in the Digitech patent.

Specifically, in Research Corporation Tech. v. Microsoft Corp., the claims are related to an actual image data process, whereas in Digitech, the claims are merely related to data, or the generation of data, which is intended to be used in image data processing.

Accordingly, when drafting claims, care should be taken to distinguish between claiming an intended patent eligible use, and the actual claiming of the patent eligible use.