Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

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Courtney

The district court held that the method and apparatus claims of the Simson patent are directed to a mathematical algorithm, and thus do not define statutory subject matter.

A mathematical formula may describe a law of nature, a scientific truth, or an abstract idea. As courts have recognized, mathematics may also be used to describe steps of a statutory method or elements of a statutory apparatus. The exceptions to patentable subject matter derive from a lengthy jurisprudence, but their meaning was probed anew with the advent of computer-related inventions.

It is of course true that a modern digital computer manipulates data, usually in binary form, by performing mathematical operations, such as addition, subtraction, multiplication, division, or bit shifting, on the data. But this is only how the computer does what it does. Of importance is the significance of the data and their manipulation in the real world, i.e., what the computer is doing. [Emphases in original]

Thus computers came to be generally recognized as devices capable of performing or implementing process steps, or serving as components of an apparatus, without negating patentability of the process or the apparatus.

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met. The court explained in Abele, 684 F.2d at 907, 214 USPQ at 686:

Although mathematical calculations are involved in carrying out the claimed process, Arrhythmia Research argues that the claims are directed to a method of detection of a certain heart condition by a novel method of analyzing a portion of the electrocardiographically measured heart cycle. This is accomplished by procedures conducted by means of electronic equipment programmed to perform mathematical computation.

The '459 Patent The '459 patent discloses an apparatus and a method for analyzing electrocardiograph signals to detect heart attack risks. The apparatus is a machine and is covered by the Iwahashi rule. The method converts an analog signal to a digital signal which passes, in reverse time order, through the mathematical equivalent of a filter. The filtered signal's amplitude is then measured and compared with a predetermined value.

The '459 invention manipulates electrocardiogram readings to render a useful result. While many steps in the '459 process involve the mathematical manipulation of data, the claims do not describe a law of nature or a natural phenomenon. Furthermore, the claims do not disclose mere abstract ideas, but a practical and potentially life-saving process. Regardless of whether performed by a computer, these steps comprise a “process” within the meaning of section 101.

This conclusion is erroneous for several reasons. First, even if mathematical algorithms are barred from patentability,[7] the '459 patent as a whole does not present a mathematical algorithm. The '459 patent is a method for detecting the risk of a heart attack, not the presentation and proposed solution of a mathematical problem. In Diehr, the Supreme Court viewed the claims as “an industrial process for molding of rubber products,” not a mathematical algorithm. 450 U.S. at 192-93, 101 S.Ct. at 1060. The '459 patent's claims as a whole disclose a patentable process.

Second, the '459 patent does not claim a natural law, abstract idea, or natural phenomenon. Diehr limited the Benson rule to these three categories, none of which encompass the '459 patent.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

Maura

The Patent and Trademark Office had granted the patent without questioning that its claims were directed to statutory subject matter under § 101. 35 U.S.C. § 101 Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming, in this case there were no disputed facts material to the issue. Thus we give plenary review to the question, with appropriate recognition of the burdens on the challenger of a duly issued United States patent. See 35 U.S.C. § 282 (duly issued patent is presumed valid); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139, 227 USPQ 543, 548, (Fed.Cir.1985) (statutory presumption of validity is based in part on recognition of the expertise of patent examiners).

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter- Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.

The Simson claims are analogous to those upheld in Diehr, wherein the Court remarked that the applicants "do not seek to patent a mathematical formula.... they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process". 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8. Simson's claimed method is similarly limited. The process claims comprise statutory subject matter.

The judgment of invalidity on the ground that the claimed method and apparatus do not define statutory subject matter is reversed. The cause is remanded for resolution of remaining issues.

RADER, Circuit Judge, concurring.

Section 101 states: 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 therefor, subject to the conditions and requirements of this title.

According to this language, "any" invention or discovery within the four broad categories of "process, machine, manufacture, or composition of matter" is eligible for patent protection. "Any" is an expansive modifier which broadens the sweep of the categories. See Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 100 S.Ct. 2204, 2207, 65 L.Ed.2d 144 (1980). The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of machines or processes and not to others.

By mixing the terms "formula" and "algorithm," 437 U.S. at 585-86, 98 S.Ct. at 2523, however, Flook further confused the meaning of "mathematical algorithm." As used by Benson, that term meant "a procedure for solving a given type of mathematical problem." 409 U.S. at 65, 93 S.Ct. at 254. Thus, an "algorithm" required both a mathematical problem and a solution procedure. A "formula" does not present or solve a mathematical problem, but merely expresses a relationship in mathematical terms. A "formula," even under Benson's definition, is not an algorithm.

The district court granted summary judgment in favor of Corazonix because "the claims of the '459 patent are drawn to a nonstatutory mathematical algorithm and, as such, are unpatentable pursuant to the provisions of 35 U.S.C. § 101." This erroneous conclusion illustrates the confusion caused by Benson and its progeny.

When determining whether claims disclosing computer art or any other art describe patentable subject matter, this court must follow the terms of the statute. The Supreme Court has focused this court's inquiry on the statute, not on special rules for computer art or mathematical art or any other art.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

Kevin

A new and useful process or apparatus is patentable subject matter, as defined in 35 U.S.C. § 101: 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 therefor, subject to the conditions and requirements of this title.

The Supreme Court has observed that Congress intended section 101 to include “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 2208, 65 L.Ed.2d 144, 206 USPQ 193, 197 (1980), quoting S.Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). There are, however, qualifications to the apparent sweep of this statement. Excluded from patentability is subject matter in the categories of “laws of nature, physical phenomena, and abstract ideas”. Diamond v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 1056, 67 L.Ed.2d 155, 209 USPQ 1, 7 (1981). A mathematical formula may describe a law of nature, a scientific truth, or an abstract idea. As courts have recognized, mathematics may also be used to describe steps of a statutory method or elements of a statutory apparatus. The exceptions to patentable subject matter derive from a lengthy jurisprudence, but their meaning was probed anew with the advent of computer-related inventions.

In Parker v. Flook, 437 U.S. 584, 591, 98 S.Ct. 2522, 2526, 57 L.Ed.2d 451, 198 USPQ 193, 198 (1978) the Court explained that the criterion for patentability of a claim that requires the use of mathematical procedures is not simply whether the claim “wholly pre-empts” a mathematical algorithm, but whether the claim is directed to a new and useful process, independent of whether the mathematical algorithm required for its performance is novel

In Diamond v. Diehr the Court explained that non-statutory status under section 101 derives from the “abstract”, rather than the “sweeping”, nature of a claim that contains a mathematical algorithm. The Court stated: “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”

In considering a claim for compliance with 35 USC 101, it must be determined whether a scientific principle, law of nature, idea, or mental process, which may be represented by a mathematical algorithm, is included in the subject matter of the claim. If it is, it must then be determined whether such principle, law, idea, or mental process is applied in an invention of a type set forth in 35 USC 101.

This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met. The court explained in Abele, 684 F.2d at 907, 214 USPQ at 686: [P]atentable subject matter [is not limited] to claims in which structural relationships or process steps are defined, limited or refined by the application of the algorithm.

The use of mathematical formulae or relationships to describe the electronic structure and operation of an apparatus does not make it nonstatutory.

That the product is numerical is not a criterion of whether the claim is directed to statutory subject matter. See Meyer, 688 F.2d at 796 n. 4, 215 USPQ at 198 n. 4 (explaining that so-called “negative rules” of patentability “were not intended to be separate tests for determining whether a claim positively recites statutory subject matter.”)

RADER, Circuit Judge, concurring.

Thus, I too conclude that the '459 patent claims patentable subject matter-not on the basis of a two-step post- Benson test, but on the basis of the patentable subject matter standards in title 35. Rather than perpetuate a nonstatutory standard, I would find that the subject matter of the '459 patent satisfies the statutory standards of the Patent Act.