Reynolds Tobacco Co. That same subject matter might also be so conceptual that the written description does not enable a person of ordinary skill in the art to replicate the process. Accordingly, this court reverses the district court's summary judgment that the ' and ' patents do not claim patent-eligible inventions. The Patent Act provides: "An application for patent for an invention disclosed in the manner provided by the first paragraph of this title in an application previously filed in the United States Nintendo of Am.
Airlines, Inc. Entitlement to a filing date extends only to subject matter that is disclosed; not to that which is obvious. Lockwood, F. Therefore, the parent application must actually or inherently disclose the elements of the later-filed claims. PowerOasis, Inc. On appeal, RCT challenges the district court's determination that claims 4 and 63 of the ' patent are not entitled to claim the benefit of the filing dates of the Application December 4, or the Application December 3, RCT also asserts that the district court erred by later ruling from the bench that claim 29 of the ' patent was not entitled to an earlier filing date.
This court notes that the ' and ' patents share the same specification with the ' patent into which the Application matured. Therefore, whether the later-filed claims in the ' and ' patents are supported by the Application under 35 U. However, because the parties have presented the issue as an effective filing date question rather than a written description question and the trial court has adopted the parties' characterization of the issue, this court will analyze the issue under section This court first considers whether the district court misplaced the burden of showing the ' patent's entitlement to an earlier effective date.
A patent is presumed valid and the party asserting invalidity has the burden of persuasion to show the contrary by clear and convincing evidence. Licensing Corp. Videotek, Inc. The challenger has the burden of going forward with invalidating prior art. The patentee then has the burden of going forward with evidence to the contrary, i. In fact, this motion had the effect of asserting invalidity. Microsoft pointed out in its motion that RCT sought the and effective dates to "avoid intervening art" and identified the ' patent as one such reference.
The district court recognized that "[b]ecause [Microsoft] is moving on validity of RCT's ' patent, Microsoft has the burden of persuasion to prove invalidity by clear and convincing evidence. June 5, RCT argues that Microsoft did not show initially that the ' patent anticipated the asserted claims of the ' patent.
However, in response to Microsoft's motion, RCT only argued that the ' patent was not prior art because the ' patent was entitled to the same effective filing date as the ' patent. RCT did not contest before the district court and thus waived on appeal that the ' patent did not meet each and every element of the ' patent claims or present a disclosure that rendered the ' patent claims obvious.
Accordingly, RCT did not put into dispute that the ' patent was an invalidating prior art reference. Because Microsoft effectively satisfied its initial burden by coming forward with invalidating prior art, the burden was on RCT to come forward with evidence to show that the ' patent was not actually prior art. The district court therefore correctly placed the burden on RCT to come forward with evidence to show entitlement to an earlier filing date.
This court must next examine the scope of the later-filed claims in determining whether the written description of the and Applications support the later-filed claims. Claim 4 of the ' patent recites an array "when thresholded at a number of levels produces a number of dot profiles Claim 63 of the ' patent recites a "halftoning mask [that] is designed to produce substantially all visually pleasing dot profiles when thresholded at a number of levels.
A "visually pleasing dot profile" is a "blue noise dot profile. A "blue noise dot profile," in turn, is a "dot profile that has substantial characteristics of a blue noise power spectrum; is locally aperiodic; has low anisotropy; and has a lack of low-frequency graininess. Accordingly, both claims 4 and 63 of the ' patent claim halftone masks that produce a number of dot profiles, "substantially all" of which have substantial characteristics of a blue noise power spectrum.
Significantly, not all dot profiles that the claimed halftone masks produce need to have blue noise characteristics, i. In contrast, the and Applications limit the invention to a "blue noise mask," which is "[a] halftone mask with wraparound properties that produces blue noise and visually pleasing dot profiles at any level of gray. Indeed, the specifications repeatedly refer to a blue noise mask as "the present invention. These references to "the present invention" strongly suggest that the claimed invention is limited to a blue noise mask.
See Trading Techs. Int'l, Inc. The specification also explains that the "objects of the invention are accomplished by generating a blue noise mask which, when thresholded at any gray level g, produces a blue noise binary pattern appropriate for that gray level.
Beyond this language, the figures in the patent only illustrate various aspects of a blue noise mask. Finally, all fifteen approved claims of the Application and all ten approved claims of the Application recite a "blue noise mask. Accordingly, the and Applications disclose only a blue noise mask. Moreover, the inventors' testimony indicate that they were in possession of only a blue noise mask at the time of filing the and Applications.
Parker admitted in his deposition that the Application did not describe any masks other than a blue noise mask. He repeatedly acknowledged that the Application's disclosure was limited to a blue noise mask.
Mitsa also characterized "the invention" as "the blue noise mask. The and Applications and the inventors' testimony show that Drs. Parker and Mitsa only described a blue noise mask in the and Applications. Given the inventors' admission that they only described a blue noise mask, a person of ordinary skill would not understand from the and Applications that the inventors were in possession of a mask other than the disclosed "blue noise mask.
Bobby R. Hunt's January 7, expert declaration, which explained that the Application provided written description support for the later-filed claims. Hunt's expert declaration, however, was five years old at that time and addressed patent claims that are not at issue in the present appeal-claim 2 of the ' patent; claim 42 of the ' patent; and claim 1 of the ' patent. Thus, the trial court did not err by deeming the declaration insufficient.
Also, RCT criticizes the district court for limiting the and Applications to the "ideal" blue noise mask depicted in figure 1. However, at no point did the district court state or imply that the applications' disclosure was so limited. RCT does not provide any substantive evidence as to why a person of ordinary skill would understand from the and Applications that the inventors possessed masks that produced dot profiles that did not have substantially blue noise characteristics at every level of gray.
Accordingly, claims 4 and 63 of the ' patent are broader than the invention disclosed in the and Applications. A person of ordinary skill in the art would not understand from the and Applications that the inventors had disclosed halftone masks that substantially produced dot profiles with substantially blue noise characteristics.
This court affirms the district court's decision that claims 4 and 63 of the ' patent are not entitled to claim the benefit of their parent applications' filing dates. Claim 29 of the ' patent recites an apparatus "for comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image against a blue noise mask Figure 2 is "a flow chart for the design of the blue noise mask of the present invention.
The algorithm shown in the flow chart requires that one "apply a blue noise filter" to a dot profile to create a blue noise mask. Claim 29 does not require an application of a blue noise filter to create a blue noise mask. Siebert, Inc. Parker Hannifin Corp. As noted, the applications describe a blue noise mask in terms of its first and second order properties and not how it is made.
As shades become lighter, their assigned number ascends. One method of halftoning is thresholding, a point algorithm technique to generate digital halftoning images and prints. A grid-like array, or mask, carries the threshold for any particular pattern.
At the time of invention, the halftoning art used different kinds of masks, including constant threshold masks, varying threshold masks, random masks, and white noise masks. Due to difficulties with each of these masks, Dr. Parker and Dr. Mista invented a blue noise mask.
Scientist and author, Dr. Robert Ulichney, published a book in in which he analyzed digital halftoning techniques and defined various metrics to measure the quality of the halftone image. This book chronicled that low frequency dots caused the graininess and artifacts common in digital halftoning pictures. While studying these problems, Dr. Ulichney discovered blue noise in halftoning. Ulicheny discovered that dot profiles would be more visually pleasing if they contained blue noise properties low frequency dots.
But, Dr. Ulichney could only generate blue noise halftone using a complex mathematical process called error diffusion.
Parker and Mista recognized the drawbacks of Dr. Ulichney's method, namely slow speed, intensive computation demands, and missing blue noise results at the mid-gray level. Parker and Mista then invented a Blue Noise Mask that was quick, used very little computer memory, and produced high quality halftone images, and subsequently applied for patents on their inventions.
The Principal Frequency Fg represents the desired average spacing between the dots in a dot profile at each gray level. The "K factor" is a scaling factor and constitutes the number by which the Principal Frequency equation can be multiplied to change the size of the filter. The K factor is not required in the patented invention and not mentioned in the patent. After the filing of the patent application, and as a part of her continuing doctoral thesis, Dr.
Mista set out to test the strictness of Dr. Ulichney's Principal Frequency equation by testing it with three different scaling factors. The power spectrum is a two-dimensional plot that expresses the frequency with which dots appear in any given direction of the dot profile.
Mista was attempting to manipulate the shape of the power spectrum and assess the impact on the dot profiles. Mista concluded that Dr. Ulichney's equation could indeed be broadened. After this work, Drs. Mista, Parker, and Ulichney together published an article summarizing these results.
Mitsa, R. Ulichney, and K. Because inequitable conduct ultimately falls within the discretion of the district court, this court reviews that determination for an abuse of discretion. Kingsdown Med.
Consultants, Ltd. Hollister, Inc. The trial court's factual findings on the issues of materiality and intent, however, receive review for clear error. To find a patent unenforceable for inequitable conduct, there must be clear and convincing evidence that the applicant 1 made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and 2 intended to deceive the PTO.
Cargill, Inc. Canbra Foods, Ltd. A determination based solely on one part of the test is legally erroneous. Here, the trial court erroneously found the patent unenforceable based on only one prong of the two-pronged test for inequitable conduct, intent to deceive the USPTO.
The first prong, materiality, is a required element of the inequitable conduct analysis. The trial judge found inequitable conduct because the inventors did not disclose Dr. Because Dr. Mista's work occurred after she and Dr.
Parker had filed the patent application, these K factor experiments were not material to their inventive activity. In the circumstances of this case, therefore, the inventors had no obligation to report their later tests to the USPTO. After the patents at issue were filed, Dr. Mista decided to expand on her research by testing the strictness of Ulichney's Principal Frequency Equation as the cutoff frequency.
Mista performed the experiment to determine the feasibility of broadening the cutoff frequency in Ulichney's Principal Frequency equation to include a scaling factor of 0. Mista had not performed the tests to attempt to generate more pleasing images, which was the objective of the patents. In sum, the experiments did not attempt to test the patented invention but instead sought to explore the consequences of manipulating the power spectrum.
The inventors had tested the algorithms in the patents long before filing their application. These post-filing K factor experiments were basic scientific research, not a verification of the patented technology. Mista, as a final part of her doctoral thesis, was merely conducting studies on broadening Dr. Kevin J.
Parker and Theophano Mitsa, the named inventors of the six RCT patents, conceived of an improved blue noise mask. The inventors' halftoning technique used a blue noise mask, which was stored in a computer's memory, to carry out a pixel-by-pixel comparison of the mask to the digital image. Their halftoning technique compares the gray level of each pixel in a digital image to the corresponding threshold number in the blue noise mask to produce a halftone image.
The claimed blue noise mask has unique first and second order properties. In addition, the dots are distributed so that they form a blue noise pattern, which means that "the resulting dot profile is a locally aperiodic and isotropic binary pattern with small low-frequency components.
The blue noise mask also has wraparound properties such that a smaller blue noise mask can be used to halftone a larger image by tiling the mask over an appropriate number of periods. Next, the skilled artisan would sequentially construct the dot profiles for other gray levels. If the next gray level is higher, a certain number of zeros are converted into ones; if the next gray level is lower, a certain number of ones are converted into zeros.
The pixel that was turned on for a gray level g remains turned on for all dot profiles with a gray level g or higher. As these pixels change value from one sequential profile to the next, the mask keeps track of those changes. The pixel-value conversion that occurs at every pixel location is encoded in a cumulative array.
When all dot profiles are built, the cumulative array becomes the blue noise mask. Compared to prior art blue noise masks, Drs. Parker and Mitsa's inventive mask produces higher quality halftone images while using less processor power and memory space. RCT alleges that Microsoft infringes all six patents.
The following claims are at issue on appeal: claims 1 and 2 of the ' patent; claim 11 of the ' patent; claims 4 and 63 of the ' patent; and claim 29 of the ' patent.
The ' patent issued on May 5, , based on a December 4, application "the Application". Asserted claims 1 and 2 recite:. The ' patent issued on August 23, , based on a December 3, Application "the Application". The ' patent is a continuation-in-part of the ' patent. Claim 11 recites:. The remaining four patents—the ', ', ', and ' patents—claim the benefit under 35 U. The ' patent is a continuation of the ' patent; the ' and ' patents are continuations of the ' patent; and the ' patent is a continuation of the ' patent.
These five patents share the same specification. The asserted claims 4 and 63 of the ' patent depend from independent claims 1 and 57, respectively. This court has heard an earlier appeal in this case and reversed the district court's finding of inequitable conduct.
Research Corp. Microsoft Corp. This court vacated the district court's grant of Microsoft's motion for summary judgment of invalidity and non-infringement.
Finally, this court remanded with instructions to reassign the case to a new judge. On remand, the district court held on summary judgment that the asserted claims of the ' and the ' patents were invalid under 35 U. The district court also held on summary judgment that the asserted claims of the ' patent were not entitled to claim priority to the and Applications.
The district court found that the invention disclosed in the and Applications were limited to a blue noise mask and thus did not provide written description support for the asserted claims of the ' patent, which claimed more than the disclosed blue noise mask. After the district court's effective date ruling for the ' patent, RCT and Microsoft stipulated that no accused Microsoft product infringes a valid, asserted claim of the ', ', ', and ' patents that does not recite a "blue noise mask.
On the eve of trial, the district court ruled from the bench that claim 29 of the ' patent was not entitled to claim the benefit of an earlier filing date. The parties stipulated to invalidity of claim On the same day, the parties filed a written stipulation dismissing the suit on the merits pursuant to the Federal Rules of Civil Procedure Rule 41 a 1 A ii.
The district court granted the stipulation on September 3, RCT appeals the district court's section ruling and the effective filing date rulings. This court has jurisdiction under 28 U. This court reviews a grant of summary judgment without deference. Liebel-Flarsheim Co. Medrad, Inc. This court also reviews questions about patent-eligible subject matter under 35 U. In re Ferguson, F. This court also reviews without deference whether a patent is entitled to an earlier priority date.
Go Med. Pty, Ltd. Inmed Corp. The Patent Act of sets forth the categories of subject matter eligible for patent protection:. Section 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. In that recent case, the Supreme Court also focused on the Patent Act's definition for "process," the statutory category at issue in this case:.
In its Bilski decision, the Supreme Court invoked again some of its earlier cases that have relevance to this case as well. For instance, the Bilski court relied on Diamond v. Diehr, U. Chakrabarty, U. Bilski, S. Chakrabarty recited that "Congress plainly contemplated that the patent laws would be given wide scope.
The Supreme Court has articulated only three exceptions to the Patent Act's broad patent-eligibility principles: "laws of nature, physical phenomena, and abstract ideas. The Supreme Court reasoned that laws of nature and natural phenomena fall outside the statutory categories because those categories embrace "the basic tools of scientific and technological work.
Benson, U. Abstractness, also a disclosure problem addressed in the Patent Act in section , also places subject matter outside the statutory categories. The section patent-eligibility inquiry is only a threshold test. See Bilski, S. Figure 1 of the ' patent shows an ideal blue noise power spectrum, which is unattainable in the real world. The horizontal axis represents the radial frequency, which is the reciprocal of the average spacing between the dots in the dot profile.
A blue noise power spectrum has negligible frequency components below the principal frequency and high frequency components above the principal frequency. The principal frequency, fg, varies from one gray level g to another:.
In this equation, R is the distance between addressable dots on the display and the gray level g is normalized from zero to one. Each dot profile exhibits a power spectrum with a different radial frequency because as the gray level increases, so does the number of dots in the dot profile. Kevin J. Parker and Theophano Mitsa, the named inventors of the six RCT patents, conceived of an improved blue noise mask.
The inventors' halftoning technique used a blue noise mask, which was stored in a computer's memory, to carry out a pixel-by-pixel comparison of the mask to the digital image.
Their halftoning technique compares the gray level of each pixel in a digital image to the corresponding threshold number in the blue noise mask to produce a halftone image. The claimed blue noise mask has unique first and second order properties. In addition, the dots are distributed so that they form a blue noise pattern, which means that "the resulting dot profile is a locally aperiodic and isotropic binary pattern with small low-frequency components.
The blue noise mask also has wraparound properties such that a smaller blue noise mask can be used to halftone a larger image by tiling the mask over an appropriate number of periods. If the next gray level is higher, a certain number of zeros are converted into ones; if the next gray level is lower, a certain number of ones are converted into zeros. The pixel that was turned on for a gray level g remains turned on for all dot profiles with a gray level g or higher.
As these pixels change value from one sequential profile to the next, the mask keeps track of those changes. The pixel-value conversion that occurs at every pixel location is encoded in a cumulative array. When all dot profiles are built, the cumulative array becomes the blue noise mask.
Compared to prior art blue noise masks, Drs. Parker and Mitsa's inventive mask produces higher quality halftone images while using less processor power and memory space.
RCT alleges that Microsoft infringes all six patents. The following claims are at issue on appeal: claims 1 and 2 of the ' patent; claim 11 of the ' patent; claims 4 and 63 of the ' patent; and claim 29 of the ' patent.
The ' patent issued on May 5, , based on a December 4, application "the Application". Asserted claims 1 and 2 recite:. The ' patent issued on August 23, , based on a December 3, Application "the Application".
The ' patent is a continuation-in-part of the ' patent. Claim 11 recites:. The ' patent is a continuation of the ' patent; the ' and ' patents are continuations of the ' patent; and the ' patent is a continuation of the ' patent. These five patents share the same specification. The asserted claims 4 and 63 of the ' patent depend from independent claims 1 and 57, respectively.
This court has heard an earlier appeal in this case and reversed the district court's finding of inequitable conduct. Research Corp. Microsoft Corp. This court vacated the district court's grant of Microsoft's motion for summary judgment of invalidity and non-infringement.
Finally, this court remanded with instructions to reassign the case to a new judge. On remand, the district court held on summary judgment that the asserted claims of the ' and the ' patents were invalid under 35 U. The district court also held on summary judgment that the asserted claims of the ' patent were not entitled to claim priority to the and Applications.
The district court found that the invention disclosed in the and Applications were limited to a blue noise mask and thus did not provide written description support for the asserted claims of the ' patent, which claimed more than the disclosed blue noise mask. On the eve of trial, the district court ruled from the bench that claim 29 of the ' patent was not entitled to claim the benefit of an earlier filing date.
The parties stipulated to invalidity of claim On the same day, the parties filed a written stipulation dismissing the suit on the merits pursuant to the Federal Rules of Civil Procedure Rule 41 a 1 A ii. The district court granted the stipulation on September 3, RCT appeals the district court's section ruling and the effective filing date rulings. This court has jurisdiction under 28 U.
This court reviews a grant of summary judgment without deference. Liebel-Flarsheim Co. Medrad, Inc. This court also reviews questions about patent-eligible subject matter under 35 U. In re Ferguson, F. This court also reviews without deference whether a patent is entitled to an earlier priority date. Go Med. Pty, Ltd. Inmed Corp. The Patent Act of sets forth the categories of subject matter eligible for patent protection:. Section 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. In that recent case, the Supreme Court also focused on the Patent Act's definition for "process," the statutory category at issue in this case:. In its Bilski decision, the Supreme Court invoked again some of its earlier cases that have relevance to this case as well.
For instance, the Bilski court relied on Diamond v. Diehr, U. Chakrabarty, U. Bilski, S. Chakrabarty recited that "Congress plainly contemplated that the patent laws would be given wide scope. The Supreme Court has articulated only three exceptions to the Patent Act's broad patent-eligibility principles: "laws of nature, physical phenomena, and abstract ideas. Benson, U. Abstractness, also a disclosure problem addressed in the Patent Act in section , also places subject matter outside the statutory categories.
The section patent-eligibility inquiry is only a threshold test. See Bilski, S. Moreover, the statutory provision that approves the broad categories of subject matter, section , itself directs primary attention to "the conditions and requirements of [Title 35].
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