The Software IP Report

Federal Circuit Demonstrates There Are Easy Cases under the Alice/Mayo Patent-Eligibility Test

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

The Federal Circuit has held patent-ineligible claims drawn to “the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.” Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA LLC, No. 2015-1411 (Fed. Cir., Dec. 28, 2015) (per curiam). If you read independent claims 8 and 16 of U.S. Patent No. 7,394,392, and have been following recent jurisprudence under 35 U.S.C. § 101, you will almost certainly find the result here unsurprising.  Consider claim 8 of the ’392 patent:

8. A method to screen an equipment operator for impairment, comprising:

screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;

selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator,

wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.

The district court (N.D. Ill.) had granted the defendant’s motion for judgment on the pleadings under FRCP 12(c), renewed after denial without prejudice of an original motion and an ensuing claim construction proceeding. A Federal Circuit panel of Judges Moore, Clevenger, and Reyna easily affirmed this holding, applying the familiar patent-eligibility test of considering (1) whether the patent claims at issue are drawn to an abstract idea or law of nature, and if so (2) whether the claims recite an inventive concept sufficient to transform the claims into patent-eligible subject matter.

In finding that the claims were directed to the above-described abstract idea, the court noted the patent owner’s emphasis on the claims’ recitation of use of an expert system, alleged to improve “the prior art by providing faster, more accurate and reliable impairment testing.” However, neither the patent’s specification nor claims explained how the expert system would be programmed, or how it would provide superior results. The patent owner attempted to argue that the claims were not directed to an abstract idea because they did not preempt all methods of equipment operator testing. The court rejected this argument, explaining that simply finding a prior art example not covered by the claims could not insulate the claims from being directed to an abstract idea.

Turning to the second prong of the Alice/Mayo test, the court rejected the patent owner’s argument that the claimed methods recited significantly more than an abstract idea because they were “embedded in ‘specialized existing equipment modules.’” However, the specification provided no example of how such modules would be used, and, unfortunately for the patent owner, stated “that the processors used in the methods may be ‘based on any commercially available microprocessor of any word bit width and clock speed, a control Read-Only-Memory, or a data processing equivalent.’”

The court also rejected the patent owner’s argument that the claims were “necessarily rooted in computer technology” and therefore patent-eligible under DDR Holdings, LLC v., L.P.  These claims did not address a problem in computer technology, but instead were “broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field testing a driver for sobriety.” Further, the claims did not provide “faster, more accurate and reliable impairment testing than what was known in the prior art.” Although the patent specification listed ten purported advantages of the claimed method and system, it gave no explanation of how those advantages were achieved. The specification’s “bald assertions made at such a high level of generality and not tied to any claim language do not provide an ‘inventive concept’ sufficient to save these claims from patent-ineligibility.”