Another algorithm patent revoked in the united states as a result of the “Alice” case
Pixar, Nvidia and Autodesk can breathe a sigh of relief and continue to innovate in the field of digital animation after avoiding a patent infringement claim in the US. Judge Otero from the United States District Court for the Central District of California, decided in his judgment of June 21, 2016, to revoke the patent that protected an algorithm for coloring pixels in digital images for which they had been sued.
Louis A. Coffelt, Jr. filed a patent application at the US Patent and Trademark Office in 2011 for a “method for deriving pixel color using steradians”. His application sought to protect a method that enables the color of a pixel on a screen to be determined by using a mathematical algorithm.
The examiners at the USPTO raised objections to the patent because, in their opinion, the algorithm was not patentable because “it can be performed in the human mind, or by a human using a pen and paper”. Consequently, Coffelt added to his claims that the method could be implemented through any machine. However, this restriction was not accepted either, so he finally included in the patent that the algorithm should be implemented by computer, in order to try to overcome the classic obstacle to patentability of algorithms and secure its grant. He was successful and the patent was granted. We set out below the contents of the single independent claim:
- A method for deriving a pixel color comprising the steps of: a computer calculating a first position vector for a geometric graphic object; a computer calculating a particular steradian region of space; a computer calculating a particular steradian radius of said steradian region of space; a computer calculating that said first position vector is located in said particular steradian region of space; a computer calculating a second position vector for a geometric graphic object; a computer calculating that said second position vector is located in said particular steradian region of space; a computer calculating a length of said first position vector; a computer calculating a length of said second position vector; a computer comparing said first length to said second length; for a first pixel, a computer deriving a pixel color for said first position vector from a result of said length comparison; for a second pixel, a computer deriving a pixel color for said second position vector from a result of said length comparison.
The technique is extremely useful in digital animation, given that the shadows we see in animated movies are simply colored pixels and the more precise their color, the greater the quality and realistic effect. The patent was finally granted on December 24, 2013 under reference USP nº 8.614.710.
The case. The complaint.
Based on its patent, Coffelt sued the technology companies Nvidia and Autodesk, and Pixar, on the grounds that they were infringing his patent with their graphic animation techniques. In their answer to the complaint the companies claimed that his patent was invalid, indicating that it sought to protect “abstract ideas” and lacked inventive step.
Alice case in the United States
Under US legislation, “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.”. However, case law by the American Supreme Court has narrowed the matters that can be patented by excluding laws of nature, physical phenomena, and abstract ideas”. A mathematical formula is clearly an abstract idea and the only possibility of obtaining protection for it is for it to come from the “application of the law of nature to a new and useful end .
However, the US had always been in favor of granting patents that, through software, protected algorithms. The change occurred following the Alice Case (2014), in which a patent that implemented the economic principle of intermediated settlement using a computer was declared invalid. The Supreme Court held that controversial patents such as these had to pass a test (Alice/Mayo Test):
- Do any of the patent’s claims contain an abstract idea?
- Do the elements of the claim contain an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application?
Judge Otero’s finding
Judge Otero applied the Alice/Mayo test to examine the validity of the patent in question. When analyzing whether the patent’s claim was aimed at protecting an abstract idea, the observations of the examiner of the USPTO were borne in mind:
“In the instant invention, a pixel color is derived mathematically using vectors in a particular steradian region. The calculation claimed can be done by a human mentally or with pen and paper”.
Assuming this idea, a judgment from the Federal Circuit Court was cited to conclude that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible”.
Furthermore, it was verified that the patent did not incorporate additional elements with sufficient inventive activity in order to turn a mere algorithm into a patent-eligible invention. Returning to the Alice case, the fact of claiming an abstract idea that can be implemented by computer does not constitute the inventive activity required for patentability.
The patent was rendered null and void.
This judgment confirms the difficulty of protecting algorithms through a patent in the United States, something which was much easier to do before the Alice (2014) case. Now, after the Alice case, securing protection in the United States is almost as complicated as in Europe. Moreover, as we have been observing for some time now, the consequences of the Alice case have been very significant for the technological patents sector.
The Pixar judgment holds that the method claimed is not patentable, since it merely seeks to protect an abstract idea. It is possible that Coffelt has discovered a new mathematical formula, but the mere fact of applying that idea by computer to color pixels does not merit the reinforced protection that a patent grants.
In any case, the judgment is appealable. We will follow it with interest.
 U.S. Code, Title 35 “Patents”, Section 101 “Inventions Patentable”.
 US Supreme Court, Diamond v. Chakrabarty, (1980).
 US Supreme Court, Funk Bros. Seed Co. V. Kalo Inoculant Co., (1948).
 US Supreme Court, Alice Corporation Pty. Ltd. v. CLS Bank International, (2014).
 Test incorporated into the US Supreme Court, Mayo Collaborative Services v. Prometheus Laboratories, Inc., (2012)
 Judgment of the United States Court of Appeals for the Federal Circuit, Cybersource Corp. v. Retail Decisions, Inc., (2011).