Ex parte Itagaki: Has the PTAB gone too far in invalidating patents under 35 USC 101

The recent decision in Ex parte Hiroyuki Itagaki, which has been greatly criticized, might also be read as simply reaffirming the current view of the Supreme Court established in the CLS Bank v. Alice Corp. With the Alice decision in June 2014, the Supreme Court incorporated the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, which was initially used to examine applications involving the laws of nature, and thus began an era of more rigorous scrutiny under 35 U.S.C 101 for software patent claims. From this point onwards, after determining that a claim is drawn to statutory subject matter, any invention involving an abstract idea will be examined in two additional steps: (1) whether a claim is directed to an abstract idea; and (2) whether a claim amounts to be “significantly more” than just implementing an abstract idea. It was held as a triumph for the inventors and organizations who thought that the software patents, which utilize the existing hardware platforms should never have been issued patents at the first place.

The application at issue in Itagaki is the U.S. Patent Application No. 20100119136, titled “Magnetic resonance imaging apparatus and image classification method”, which relates to an improvement over existing MRI apparatuses and will be referred as “Itagaki’s apparatus” in this article. The key aspect of the invention, as described by inventors, is the classifying and rearranging the plurality of images acquired by multi-station imaging in a MRI apparatus. The cited patents and published literatures revealed that previous MRI apparatuses could perform multi-station imagining but were not equipped with a classification processing unit. The Patent Trial and Appeal Board (PTAB) overturned the patent examiner’s 103(a) rejection and introduced a new ground of rejection under 35 U.S.C. 101 instead. The panel held that the invention was directed to an abstract idea of classifying the images. And in view of CLS Bank v. Alice Corp decision, augmenting a generic MRI apparatus with such a classification processing unit did not alter the operation of the apparatus in any unconventional way and did no more than implementing an abstract idea.

The decision of the PTAB in Itagaki is confusing given that in the post-Alice era we have seen two decisions in favor of software patents that involved an abstract idea – McRO v. Bandai Namco Games America and the Enfish LLC v. Microsoft. Notwithstanding, the PTAB decided the invention in Itagaki was more similar to the invention at issue in the Supreme Court’s Alice’s decision.

In the the McRO’s case, the Federal Circuit overruled the decision of district court which considered lip-synchronizing software ineligible under section 101. And while deciding this matter, the Federal Circuit said “the claimed improvement here is allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters,’ which could previously only have been produced by human animators.” Furthermore, the stance of the panel with respect to McRo’s invention is interesting because the invention did not change the nature of computer’s operability in terms of tangible aspects such as speed and memory, but only made it simpler for human animators to animate 3D characters, which could have been done by using pencils, pens and other manual artistic tools. Similarly, in Enfish LLC v. Microsoft, the installed software improved the way computers operate. However, both of these inventions were held patent eligible despite involving an “abstract idea”.

In essence, these two decisions recognized the problems with two-step framework of Mayo/Alice. Firstly, almost all inventions can be reduced to an ineligible abstract idea because every invention has a basic underlying scientific principle or theory on which it operates. Secondly, the framework does not define what is an abstract idea.

Now, in context of Itagaki’s MRI apparatus, the classification processing unit performs a function of classifying the images acquired by instrument during its regular course of operation. The PTAB held that the algorithm which performs the task of classifying the images can also be done manually or mentally and therefore “the multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality”. Further, the panel held that “the multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality”. This situation is similar to the cases where upon programing, a “general purpose computer” becomes “special purpose computer” or as stated in Ultramercial v.Hulu, “a programmed computer contains circuitry unique to that computer”. Thus the true questions in Itagaki are whether such an algorithm creates a special purpose MRI apparatus and whether the new apparatus is described with “particularity” and “improved functionality”? These issues, however, are best handled when determining the sufficiency of the disclosure (i.e., 35 U.S.C. 112), particularly where the claim here specifically is drafted to cover a machine.

Itagaki’s claim-1 reads as follows:

A magnetic resonance imaging apparatus comprising:

an image acquisition unit configured to divide an imaging region of an object to be examined into a plurality of stations of respective station positions, and acquire a plurality of images having different image types for each station, while moving a table on which the object is mounted, station by station;

a display control unit configured to display the plurality of images in a predetermined display format; and

a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters, wherein the display control unit displays the plurality of images by image types in spatial order of station positions, based on the classification result by the classification processing unit.

To address these queries, first we have to look back at the decision of Federal Circuit in In re Alappat (1994). Kuriappan Alappat, an employee of Tektronix had devised an anti-aliasing algorithm that improved the appearance of the display. The PTO held that the computer instructions to carryout mathematical algorithm were not eligible for patents under section 101 despite involving tangible machinery such as an oscilloscope. However, the Federal Circuit held differently, stating that “a machine for converting discrete waveform data samples into anti–aliased pixel illumination intensity data to be displayed on a display means”. The court went further by referring to In re Bernhart, explaining that “we have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software”

Applying the Alappat rule in the light of recent McRo, Enfish, and Ultramerical decisions, the Itagaki MRI apparatus, which used an algorithm, should have been been properly treated as a “special purpose apparatus” weighing towards patent-eligibility under section 101 despite involving an abstract idea.

Next, the issue whether the apparatus operates in an unconventional manner or not can be addressed in terms of its function. For instance, in McRo’s decision, the unconventionality was measured in terms of the ease with which human animators can animate 3D characters. In the current scenario, the primary function of MRI apparatus is to produce images, and thus the unconventional manner of working should be measured in terms of the variations in the images produced by the improvised MRI apparatus. Now, while overruling the examiner’s 103(a) rejection, the PTAB stated that the “Because the evidence relied upon does not disclose or lead one of ordinary skill in the art to a multi-station MRI to which all the claims are limited to, a prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence…Accordingly, the rejection is not sustained.”  This suggests that the MRI apparatus of the claims was not only novel, but it was also non-obvious such that the person of ordinary skill in art could not have envisioned it. In other words, the court acknowledges that at least a certain degree of unconventionality (i.e., enough to overcome an obviousness rejection) was imparted to the Itagaki improved MRI apparatus through an algorithm. As a result, MRI apparatus must be significantly more than the platform on which the algorithm operates and should have passed patent-eligibility test under section 101. Moreover, if the claim does overcome the examiner’s obviousness rejection it is difficult to understand the PTAB panel’s statements regarding conventionality.

When addressing the issue of generality vs. particularity, we come across a situation where the inventors described the most crucial aspect of the invention, the classification unit, in general terms in the claim. Consequently, in the PTAB’s assessment, the representative claim did not rise above the threshold test of patentability under section 101. But much of what the PTAB seems concerned about relates to disclosure and there is nothing in the PTAB panel decision in Itagaki to suggest that the PTAB reviewed the specification to determine whether the somewhat generally described terms were given particularized meaning by the applicant. It also raises questions about how the PTAB could have properly conducted an obviousness review if the classification unit was so abstract as to be infirm from a patent eligibility point of view.

In conclusion, on one hand, the claims appear to pass the Alappat test and are consistent with McRo, Enfish, and Ultramerical decisions. On the other hand, they describe the key component of the invention, the Classification Processing Unit, in general terms. The PTAB seems to focus on the general description of this key component and appears to hold the view that an abstract idea such as an algorithm can be patented only if it integrates a machine or apparatus that is described in particularity to impose meaningful limitations on the claims. It will be interesting to see what the Federal Circuit decides, especially when McRo and Enfish decisions were declared so closely to the current decision.