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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Northern District of California Invalidates 3D Computer Graphics Claims Under Bilski, Prometheus

Fuzzysharp Techs. Inc. v. 3D Labs Inc., No. C 07-5948 SBA (N.D. Cal. Dec. 11, 2009)

The Northern District of California, in an opinion by Judge Armstrong, has invalidated various claims of two patents directed to improving 3D computer graphics "through provision of an improved method for performing visibility calculations" as not directed to patentable subject matter under In re Bilski

Defendant argued in its summary judgment brief (no oral argument was heard by the Court) that the relevant claims were no more than "mathematical formulas and algorithms that fail Bilski's machine-or-transformation test."  Plaintiff countered by arguing that, while the claims at issue were not transformative, they were "tied to a particular machine; to wit, a computer."

The Court found that plaintiff's argument "miss[ed] the mark.  The salient question is not whether the claims are tied to a computer.  Rather, as Bilski makes clear, the question is whether the claims are 'tied to a particular machine.'" (emphasis in original).  The Court explained that "[c]ourts applying Bilski have concluded that the mere recitation of 'computer' or reference to using a computer in a patent claim [is] insufficient to tie a patent claim to a particular machine … [l]ikewise, the PTO Board of Patent Appeals and Interferences has reached the same conclusion, and consistently ruled that the mere fact that a claim references the use of a computer is, standing alone, insufficient to meet the machine implementation requirement." (emphasis in original).  Finding the disclosed authorities persuasive, the Court held that the while the claims at issue may be "performed on a computer," they were not "tied to any particular machine."  The Court therefore invalidated the claims as not directed to patentable subject matter.