N. District Court of California grants Apple’s 12(c) motion for judgment on the pleadings (following full briefing and oral argument) finding claims of U.S. Pat. No. 6,661,203 ineligible under 35 U.S.C. § 101 based on broad functional claim language that does not recite how to achieve the claimed process beyond what is known in the admitted prior art. Uniloc USA, Inc. v. Apple, Inc., Civil No. C 18-00358 WHA (N.D. Cal. May 18, 2018).
Uniloc (Uniloc USA and Uniloc Luxembourg) sued Apple for infringement of its battery charging and discharging system. The court considered the following apparatus and method claims in its analysis (although, it was disputed as to whether these claims were representative):
An apparatus for exercising a battery, comprising
a charging circuit having a charging current output coupled to the battery;
a temperature sensor positioned to sense a temperature related to the battery temperature;
a discharging circuit having a discharging current input coupled to the battery; and
a controller coupled to said temperature sensor, said charging circuit, and said discharging circuit, said controller operable to set said charging current in accordance with said temperature, and operable to set said discharging current in accordance with said temperature, said controller being operable to set said discharging current to zero when said temperature is higher than a first predetermined threshold value.
A method of charging a battery, comprising the steps of:
sensing a temperature related to the battery temperature;
setting a charging current in accordance with said sensed temperature and setting said charging current to zero when said temperature is higher than a first predetermined threshold value; and
charging the battery at said charging current.
To support the claims, the written description referenced a Smart Battery industry standard, and listed a commercial implementation of a suitable Smart Battery: Moltech Power Systems model NI2040A17 Rechargeable Lithium Ion Battery. Thus, the hardware (a plurality of lithium ion cells, a fuel gage, a temperature sensor, a controller, a bus interface, etc.), as well as some aspects of its use, admittedly were known in the art.
Accordingly, the novelty purported to lay in the operation of the charging/discharging system. In its analysis of the claims and supporting disclosure, the court found nothing more than an abstract idea (Alice, Step 1) without significantly more (Alice, Step 2).
For example, in the present patent eligibility landscape, the patent did provide: a problem/solution approach; and in some instances, this aids the patentee with respect to maintaining patent eligibility. Here, the patent stated the problem being battery life and reliability being compromised by high battery recharging temperatures, and the solution being a smart battery that ‘extracts maximum performance from the battery without exceeding safe operational constraints for the battery.’ However, standing alone, this problem/solution disclosure was insufficient to save the patent from an ineligibility determination.
Notably, the court looked to the patent for inventive source code, formulas and circuitry and/or an algorithm, parameters, variables, or values that explain how to control the current as a function of temperature. Put differently, the court looked to the claims for ‘the how’—how the controller or how the claimed process was to be achieved, rather than mere ‘results.’ This seemed particularly true in light of the hardware being admittedly known in the art (e.g., ‘industry-standard hardware’). The smart battery was circuitry; however, it was not ‘inventive’ circuitry. The court compared the claims to those of Mayo—e.g., by substituting “electricity and heat” for “thiopurine drug dosages and metabolite values,” and then adding the instruction to ‘apply it.’
It is also interesting that this case was decided on 101 grounds. While purely conjecture on my part, I expect that Apple was taking as many bites at the … well, the apple, as possible—meaning that it may have considered that even if it failed on 101 grounds, it could still attack the patent claims on 103 and perhaps even 102 (inherency) grounds.
Lessons for Practice
When drafting computer-implemented claims, the claims and written description need supporting detail of how to achieve the purported results. In the written description, provide one or more detailed embodiments using a flow chart and/or source code. And then, draft your claims to track all or a portion of the flow chart or code. To illustrate, this case may have been decided differently if the specification included a flow chart and detailed support explaining how the maximum performance was achieved without exceeding the battery’s operational constraints.