       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

FUZZYSHARP TECHNOLOGIES INCORPORATED,
            Plaintiff-Appellant,

                           v.
                 3DLABS INC., LTD.,
                  Defendant-Appellee.
              __________________________

                      2010-1160
              __________________________

   Appeal from the United States District Court for the
Northern District of California in Case No. 07-CV-5948,
Judge Saundra Brown Armstrong.
             ___________________________

              Decided: November 4, 2011
             ___________________________

   MATTHEW G. MCANDREWS, Niro, Haller & Niro, of
Chicago, Illinois, argued for plaintiff-appellant.

   JONATHAN D. BAKER, Skadden, Arps, Slate, Meagher
& Flom LLP, of Palo Alto, California, argued for defen-
dant-appellee. With him on the brief was MICHAEL D.
SAUNDERS.
              __________________________
FUZZYSHARP TECH   v. 3DLABS                              2


 Before BRYSON, O’MALLEY, and REYNA, Circuit Judges.
PER CURIAM.

    Fuzzysharp Technologies Inc. appeals from a sum-
mary judgment invalidating several of its patent claims
as encompassing unpatentable subject matter.           The
district court based its ruling on this court’s adoption of
the “machine-or-transformation test” in the en banc
decision in In re Bilski, 545 F.3d 943 (2008). The Su-
preme Court subsequently disapproved of this court’s
exclusive reliance on the machine-or-transformation test
to determine patentability. Bilski v. Kappos, 130 S. Ct.
3218 (2010). In light of the Supreme Court’s decision in
Bilski, we vacate the district court’s ruling and remand to
the district court for claim construction and further
proceedings to apply the pertinent intervening decisions
of the Supreme Court and this court.

                              I

    The objective of three-dimensional computer graphics
technology is to create two-dimensional images that
depict three-dimensional scenes. For example, a com-
puter could store a representation of a teapot as a two-
dimensional object, accounting only for attributes such as
the teapot’s outline and color. Any depictions of that two-
dimensional representation would fail to account for
three-dimensional attributes of the teapot such as its
convexity. On the other hand, a computer could store a
three-dimensional representation of the teapot. Because
conventional viewing technology is capable of displaying
only two dimensions, three-dimensional computer graph-
ics technology would use various techniques such as
shading and lighting to depict the three-dimensional
attributes of the teapot in a two-dimensional image.
3                                FUZZYSHARP TECH   v. 3DLABS


    Several three-dimensional objects together compose a
scene. A scene including the teapot might include three
different objects representing the teapot—its spout, its
body, and its handle. Any scene can be observed from
different positions and different orientations for each
position. Only a portion of each object can by viewed from
a given position and orientation (collectively referred to in
the patents in suit as a “viewpoint”). For example, only a
portion of the spout, a portion of the body, and a portion of
the handle of the teapot can face a single viewpoint. The
patents refer to each portion as a “surface”; each surface
can be projected onto a plane perpendicular to the view-
point orientation. The two-dimensional rendering of the
three-dimensional teapot can be presented on such a
projection plane.

    Some surfaces will be partially or completely con-
cealed by other surfaces closer to the viewpoint. From
one viewpoint, the handle surface of the teapot may
partially obscure the body surface and the body surface
may completely obscure the spout surface. If hidden
surfaces such as the spout can be detected and then
ignored in the remaining calculations, it will take less
time to render a scene. One way to detect hidden surfaces
is to perform a pixel-by-pixel comparison of surfaces in
the projection plane. That method of comparison requires
projecting each surface onto the plane and determining
for each pixel which surface projecting onto that pixel is
closest to the viewpoint. In the teapot example, that
method of comparison would require evaluating which
surface is the closest for every pixel even though the
handle surface is always closer than the body surface,
which in turn is always closer than the spout surface.
Because that approach can be computationally intensive,
it is desirable to group calculations together if some
FUZZYSHARP TECH   v. 3DLABS                               4


surfaces are always visible (such as the handle) or always
hidden (such as the spout).

    Fuzzysharp owns several patents relating to an im-
proved method of hidden surface detection that works off
the principle that some surfaces are always visible and
other surfaces are always hidden. In 2007, Fuzzysharp
brought a district court action against 3DLabs Inc., Ltd.,
asserting United States Patent No. 6,172,679 (“the ’679
patent”) and United States Patent No. 6,618,047 (“the
’047 patent”). Those patents originate from the same
application and have the same written description. They
disclose a “method of reducing the complexity of hidden
surface removal in 3D graphics systems.” ’679 patent,
abstract. The method described in the specification
decreases the complexity of hidden surface detection by
employing what are described as “fuzzy regions” and
“non-fuzzy regions.” Id., col. 8, ll. 62-67. In a general
sense, a fuzzy region is the portion of a surface that faces
any viewpoint in a group of viewpoints. A non-fuzzy
region is the portion of a surface that faces every view-
point in a group of viewpoints. The fuzzy region is the
union of the surface portions, and the non-fuzzy region is
the intersection of those portions.

    The patents recognize that the fuzzy region of a sur-
face can be difficult to compute because “the viewpoints
can have any orientation and be anywhere in the view-
point bounding box.” Id., col. 8, ll. 49-51. Instead, the
method described in the patents calculates the fuzzy
region on the projection plane.

    The projection plane is divided into grid cells that are
used to represent the fuzzy and non-fuzzy regions of each
surface for a particular bounding box of viewpoints. Once
those regions are known, methods disclosed in the specifi-
5                                FUZZYSHARP TECH   v. 3DLABS


cation can be used to calculate surface visibility for all
viewpoints in the bounding box based on those regions.
The method for finding invisible surfaces generally begins
with surfaces close to the viewpoint, which are preferably
large and must be opaque. Once the non-fuzzy regions of
those surfaces are known, the grid cell approximations of
those regions can be used to find hidden surfaces. If
another surface is farther away from the viewpoint and
the fuzzy extent of that surface falls entirely within the
approximated non-fuzzy region of the closer surface, then
the farther surface is invisible to all viewpoints in that
bounding box. In the teapot example, there will be some
bounding box of viewpoints for which the portion of the
body surface that faces all the viewpoints in the box
obscures the portion of the spout surface that faces any
viewpoint in the box. Once the fuzzy calculations are
completed for that bounding box of viewpoints, the spout
surface can be ignored in future calculations because it
has already been determined to be hidden. The specifica-
tion discloses a similar method for using fuzzy regions to
determine which surfaces are always visible. Both meth-
ods employ particular devices, such as “fuzzy buffers” or
z-buffers to perform some of the calculations, but none of
those devices are recited in the asserted claims.

    Fuzzysharp asserted claims 1, 4, and 5 from the ’679
patent and claims 1 and 12 from the ’047 patent. The
parties agreed to constructions for most of the terms in
those claims. For the disputed terms, the district court
applied Fuzzysharp’s proposed construction in evaluating
3DLabs’ summary judgment motion on patentable subject
matter. The district court resolved the case in response to
that motion by invalidating all the asserted claims based
on its conclusion that they do not satisfy the “machine or
transformation” test, i.e., they do not involve the use of a
FUZZYSHARP TECH   v. 3DLABS                              6


particular machine, and they do not result in the trans-
formation of an article to a different state.

                              II

    The district court properly held that all of the as-
serted claims fail the machine-or-transformation test. We
agree with the court’s analysis of that issue, although we
recognize that in the aftermath of the Supreme Court’s
decision in Bilski, failure to satisfy the machine-or-
transformation test no longer ensures that the subject
matter of a claim will be deemed unpatentable.

    Fuzzysharp has acknowledged that none of the claims
result in the transformation of an article into a different
state. Instead, it argues that its claims are tied to a
particular machine because they require the use of a
computer. Fuzzysharp relies, for example, on claim 12 of
the ’047 patent, which recites the following method:

        12. A method of reducing a step of visibility
   computations in 3-D computer graphics from a
   perspective of a viewpoint, the method compris-
   ing:

       computing, before said step and from said per-
   spective, the visibility of at least one entity se-
   lected from 3-D surfaces and sub-elements of said
   3-D surfaces, wherein said computing step com-
   prises:

       employing at least one projection plane for
   generating projections with said selected set of 3-
   D surfaces and said sub-elements with respect to
   said perspective;
7                                 FUZZYSHARP TECH   v. 3DLABS


        identifying regions on said at least one projec-
    tion plane, wherein said regions are related to the
    projections associated with said selected 3-D sur-
    faces, said sub-elements, or bounding volumes of
    said 3-D surfaces or said sub-elements;

       updating data related to said regions in com-
    puter storage; and

        deriving the visibility of at least one of said 3-
    D surfaces or said sub-elements from the stored
    data in said computer storage; and

        skipping, at said step of visibility computa-
    tions, at least an occlusion relationship calcula-
    tion for at least one entity that has been
    determined to be invisible in said computing step.

     In order to satisfy the machine-or-transformation test,
“the use of a specific machine [in a claim] must impose
meaningful limits on the claim's scope.” In re Bilski, 545
F.3d at 961, citing Gottschalk v. Benson, 409 U.S. 64, 71-
72 (1972). In claim 12, the recitation of general-purpose
computer storage could encompass any number of dispa-
rate structures, including hard drives, CD-RWs, and flash
memory modules. Although the lack of structural attrib-
utes is not always dispositive under the machine-or-
transformation test, we find it relevant in this case. The
references to a computer in claim 12 impose only two
limitations: the machine must be able to compute, and it
must be able to store data. Those functions are essen-
tially synonymous with the term “computer” and thus add
little or nothing to simply claiming the use of a general
purpose computer. The recitation of computer functions
in the claim thus does not confine the preemptive effect of
the claim because the underlying method has “no sub-
FUZZYSHARP TECH   v. 3DLABS                              8


stantial practical application except in connection with a
digital computer.” Benson, 409 U.S. at 71. Those limita-
tions are therefore not “meaningful limits” on the claim’s
scope.

    Fuzzysharp argues that some of its unasserted claims
are tied to particular hardware in the form of z-buffers
and other specific pieces of computer hardware, e.g., ’679
patent, claim 32, and that those claims “confirm that the
methods of the Asserted Claims operate on and in the
environment of computer graphics hardware systems.” In
addressing questions of patentable subject matter, how-
ever, we assess each claim independently. There is no
basis for looking to other claims except to the extent that
they inform the meaning of the challenged claims through
claim differentiation. Fuzzysharp argues that this court
looked to elements recited in unasserted claims in Re-
search Corp. Technologies, Inc. v. Microsoft Corp., 627
F.3d 859 (Fed. Cir. 2010). In fact, however, the court in
that case concluded that the asserted claims were patent-
eligible without looking to unasserted claims and then
simply noted that elements recited in unasserted claims
“confirm this court's holding that the invention is not
abstract.” Id. at 869. That statement did not change the
long-standing rule that each claim must be limited to
patentable subject matter. See, e.g., Bilski, 130 S. Ct. at
3231 (analyzing claims separately); O’Reilly v. Morse, 56
U.S. (15 How.) 62 (1853) (same); see also 35 U.S.C. § 282
(claims are independently presumed valid). Indeed, if it
were sufficient to satisfy section 101 that some claims in
the patent are patent eligible, independent claims could
avoid section 101 scrutiny altogether as long as they were
paired with dependent claims that were patent eligible.

    Based on our en banc decision in Bilski, the district
court understandably concluded that the failure of the
9                                FUZZYSHARP TECH   v. 3DLABS


asserted claims to satisfy the machine-or-transformation
test resolved the issue of unpatentability. Because the
Supreme Court in Bilski held that failing to satisfy the
machine-or-transformation test does not necessarily
render claims unpatentable, the basis for the district
court’s decision is no longer sound. Moreover, we con-
clude that under the Supreme Court’s decision in Bilski
and our own more recent precedents, the patent eligibility
of at least one of the asserted claims turns on questions of
claim construction that the district court did not have the
opportunity to address. Because the parties have not
briefed those claim construction issues, we leave the task
of construing the claim limitations in question to the
district court. Wavetronix LLC v. EIS Elec. Integrated
Sys., 573 F.3d 1343, 1355 (Fed. Cir. 2009) (“Although
claim construction is a question of law, we generally
refuse to construe claims in the first instance.”) We
therefore vacate the judgment of the district court and
remand to that court for further proceedings.

    Each party shall bear its own costs for this appeal.

             VACATED AND REMANDED
