The Software IP Report

Court Denies Motion for Judgment on the Pleadings That Patent Claims Relating Musical Notations To Color Are Not Patent-Eligible

At least at the pleadings stage, a court has declined to hold patent-ineligible patent claims directed to “relating electromagnetic waves to harmonic sound waves.” Michael Sandborn & Mark Sandborn P’ship v. Avid Tech., Inc., No. 11-11472-FDS (D. Mass Sept. 5, 2013).  Accordingly, the plaintiff’s lawsuit alleging infringement of U.S. Patent No. 6,930,235 was allowed to proceed.

Claim 1 of the ’235 patent was representative and recited:

1. A method for relating electromagnetic waves to harmonic sound waves, comprising the steps of:
assigning one fundamental color of a color spectrum of twelve analogous colors to one of twelve fundamental tones of a musical 5th relationship, wherein the tones are represented by notes; and
consecutively associating the remaining analogous colors to the tones.

The court analyzed the defendant’s motion for judgment on the pleadings under the rubric of 35 U.S.C. § 101. Citing Diamond v. Diehr, 450 U.S. 175 (1981), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the court acknowledged that the applicable test was whether the patent claims covered an “abstract idea.” However, the court also noted that “[n]either the Supreme Court nor the Federal Circuit has set forth any definitive framework for conducting the § 101 analysis in the context of an allegedly abstract concept.”

Here, the patent-in-suit claimed “a process for relating music two colors.” In particular, the claims were directed to “a method and system wherein the twelve colors in a color spectrum are assigned to the twelve tones of a chromatic scale based on their positions in the Circle of Fifths.” The defendant argued that “the claimed invention involves only mental processes” that by definition were “a subset of abstract ideas.”

Looking at claim 1 of the ’235 patent, reproduced above, the court stated that the “defendant’s argument somewhat oversimplifies the nature of the claims at issue.” While the claim did “set out the abstract concept of using colors to represent different tones,” the claim also specified how that should be done “to create a specific system of musical notation that depicts notes with highly harmonic relationships and proximate colors on the color spectrum.”

The court noted that a claim could “embrace an abstract idea and still be patentable.” The question was whether the claim “covers only an abstract idea, or instead covers an application of an abstract idea.” (Emphasis in original.) At this stage in the case, the defendant had not established “that the only plausible construction of the patented claims results in unpatentable mental process, nor has it clearly established that no construction of the term could provide sufficient limitations on the abstract concept.”

Further, the court was not prepared to decide at this stage whether the claims passed the “machine or transformation” test. The plaintiffs conceded that the claims failed the machine prong of the test, but nonetheless contended “that’s the invention is transformative.” The court did not decide the issue, because even if the defendant were correct that the claims failed the machine or transformation test, “judgment on the pleadings is inappropriate.” The machine or transformation test is not the exclusive test, and the court would need to consider the claims against the abstract idea test regardless of whether they passed or failed the machine or transformation test.

In conclusion, the court declined to hold the claims of the ’235 patent patent-ineligible under Section 101 because “defendant has not met the heavy burden that is required to support a finding of unpatentability at this early stage in the suit.”