The invention considered by this US decision relates to signal transmission rather than software,
as such. It does, however, require the
application of a mathematical concept just as many software patents do, and so
is highly relevant to software patents.
Claims of US patent 5,659,891 in the name of Mobile
Telecommunications Technologies, LLC were found to be patent eligible subject
matter under 35 USC 101 because the invention uses any potentially abstract idea in a process
designed to solve a technological problem in conventional industry practice.
- An invention is not patent
ineligible merely because it requires the use of a mathematical equation.
- A claim is not abstract merely
because some requirements can be rewritten in the language of mathematics.
- A patent may be valid if it employs
a mathematical formula in a process designed to solve a technological problem
in conventional industry practice.
Broad description of the invention
The '891 patent claims methods and systems that use multicarrier modulation using co-located
transmitters to achieve higher transmission capacity for mobile paging and
two-way digital communication.
1. A method of operating a plurality of paging carriers in a single
mask-defined, bandlimited channel comprising the step of transmitting said
carriers from the same location with said carriers having center frequencies
within said channel such that the frequency difference between the center
frequency of the outer most of said carriers and the band edge of the mask
defining said channel is more than half the frequency difference between the
center frequencies of each adjacent carrier.
Mobile Telecommunication Technologies, LLC is the patentee of US
5,659,891. The defendant Leap Wireless Intenational, Inc contended that the
patent is directed to an abstract idea and hence invalid.
The Supreme Court has held that there are three specific exceptions
to patent eligibility under s101: laws of nature, natural phenomena, and
abstract ideas. A two part test for distinguishing
patents that claim laws of nature, natural phenomena and abstract ideas from
those that claim patent eligible applications of the concepts was first stated
in Mayo Collaborative Servs. v. Prometheus Labs., Inc, 132 S. Ct. 1289. 1296097
(2012), and developed in Alice Corp. Pty Ltd v. CLS Bank Itn’l, 132 S. Ct.
2347, 2355 (2014). In a first step, it
is determined if the claims are directed to a law of nature, natural phenomenon
or abstract idea. If not, the claims
pass muster under s101 (Ultramercial v Hulu). In making this determination, the
court looks at what the claims cover (Ultramercial v Hulu). It is often useful
to determine the breadth of the claims in order to determine whether the claims
extend to cover a ‘fundamental ... practice long prevalent in our system ...”.
The court applies a second step only if it finds in the first step
that the claims are directed to a law of nature, natural phenomena or abstract
idea (Alice). The second step
requires the court to determine whether the elements of the claim individually,
or as an ordered combination, “transform the nature of the claim” into a
patent-eligible application. The second step may be described as a search for
an inventive concept. Steps that are in context not obvious, not already in
use, or purely conventional may result in patent-eligibility (Diamond v.
Diehr). However, insignificant post-solution activity will not result in
patent-eligibility (Parker v Flook). A claim may become patent-eligible when
the “claimed process includes not only a law of nature but also several
unconventional steps ... that confine the claims to a particular, useful
application of the principle (Mayo).
In considering step 1, Leap alledged that claim 1 covers the
“abstract idea of selecting the transmission frequencies for multi-carrier
transmission via a mathematical formula”.
The court found that under step 1, the patent was not directed to an
abstract idea. Claim 1 teaches a way of
transmitting “paging carriers” in a “bandlimited channel” where the “paging carriers”
are transmitted from the “same location” and are modulated with reference to
two different frequencies: one frequency at the edge “band edge of the mask”
and the other frequency at the center of “each adjacent carrier”. Transmitting
“paging carriers” from “the same location” and modulating their transmission
frequencies is not an abstract idea in the vein of “a fundamental economic
practice”, as for the alleged invention considered in Alice.
The court rejected the allegation that the claims are directed to an
abstract idea because portions can be expressed mathematically. No authority
was cited in support of this allegation.
The supreme court has repeatedly emphasised that the bar on patenting
abstract ideas “embodies the longstanding rule that an idea of itself is not
patentable” (Alice). Leap did not show
that claim 1 is an attempt to patent a mathematical formula. The fact that some
requirements of a claim can be rewritten in the language of mathematics does
not inherently mean that the claim is directed to an abstract idea because “at
some level, all inventions embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract idea” (Alice).
While the court found that claim 1 was not directed to an abstract
idea under step 1, it nevertheless considered step 2 and determined that the
additional elements of claim 1 would transform it into a patent-eligible
application. While the patent might employ a mathematical formula, it uses that
formula in a process designed to solve a technological problem in conventional
industry practice. (Alice, quoting Diehr).