Patent claims directed to a “movable barrier operator,” i.e., controlling a garage door, are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test. Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Nos. 2018-2103, 2018-2228 (Fed. Cir. Aug. 21, 2019) (precedential) (Judge Chen, joined by Judges O’Malley and Lourie). There are a lot of lessons in this procedurally rich post-trial appeal from, and partial reversal of, denial of a JMOL motion. In this post we will focus on a substantive lesson: patent claims reciting devices and hardware elements have no particular claim to patent-eligibility.
Representative claim 1 of U.S. 7,224,275 recites
A movable barrier operator comprising:
a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;
a movable barrier interface that is operably coupled to the controller;
a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:
corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and
comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.
The trial court had denied a JMOL motion of § 101 ineligibility. Citing the Federal Circuit’s 2018 decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (claims directed to software providing a particular arrangement of menu options for mobile devices are patent-eligible) the lower court found the claims non-abstract because they improved “sending and experiencing data” over the prior art.
The Federal Circuit, found claim 1 of the ’275 patent to be directed to “wirelessly communicating status information about a system,” an abstract idea question under step one of the Alice test. The Specification, unfortunately for the patent owner, supported this conclusion and, really, suggested that the invention was at best a new application of existing wireless technology:
the only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time.
Other cases, including Amdocs Ltd. V. Openet Telecom, Inc., (Fed. Cir. 2016), Affinity Labs of Tex., LLC v. DIRECTV, LLC (Fed. Cir. 2016), and Affinity Labs of Texas, LLC v. Amazon.com Inc. (Fed. Cir. 2016), supported the proposition that “the broad concept of communicating information wirelessly, without more, is an abstract idea.” This case was distinguishable from cases like Thales Visionix Inc. v. United States (Fed. Cir. 2017), where an improved and advantageous arrangement of hardware was recited. There was no technical improvement, as the Federal Circuit had found in McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir 2016), or in the controversial 2014 decision authored by Judge Chen, DDR Holdings, LLC v. Hotels.com, L.P.
The patent owner could find no solace under step two of the Alice test, because there was no inventive concept. The patent owner argued that the claim recited an inventive ordered combination. No dice, said the court, explaining that the patent owner
misunderstands our case law. The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and (2) whether all of the steps “as an ordered combination add nothing to the laws of nature that is not already pre-sent when the steps are considered separately.” In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the “inventive concept”? This analysis applies to both system and method claims.
(Emphasis added; citations omitted.) The only allegedly inventive concept was the “act of wireless communication,” which was not enough to overcome the claims’ patent-ineligible abstract idea.