Extracted from Law360
The Supreme Court’s decision in Alice has led to countless district court and numerous federal circuit decisions holding business methods and software patents invalid for claiming ineligible subject matter.[1] The same cannot be said for the U.S. International Trade Commission. Since Alice there have only been three investigations where administrative law judges’s have addressed patent eligibility under 35 U.S.C. §101, but post-Alice patent eligibility has never been addressed by the commission.[2]
Two recent initial determinations in Network Devices, Related Software and Components Thereof and Activity Tracking Devices, Systems and Components Thereof provide the commission with opportunities to address patent eligibility under § 101. In Network Devices, Related Software and Components Thereof, ALJ David Shaw upheld the patent eligibility of a patent related to a communications device using a logging module.[3] On the other hand, in Activity Tracking Devices, Systems and Components Thereof ALJ Sandra Lord issued the first post-Alice decision in the ITC that found patents invalid under §101.[4] Further, ALJ Lord held that no presumption of validity applies in the context of §101.[5] Parties have petitioned for review of both of these decisions.
The following article discusses the all of investigations where ALJ’s have addressed patent eligibility under §101 post-Alice.
Communications or Computing Devices and Components Thereof, (337-TA-925)
In Communications or Computing Devices and Components Thereof, intervenor Google Inc. filed a summary determination motion to invalidate U.S. Patent No. 5,870,610 (the '610 Patent) under 35 U.S.C. §101.[6] The ’610 Patent relates to an automated computer system for locating and downloading driver software for computer peripherals.[7] Asserted claim 13 stated:
13. A system that is capable of autoconfiguration to accommodate support of a plurality of devices comprising:
means for identifying a first device as a device for which driver software is desired, said first device being one of said plurality of devices;
site-detection means, responsive to said means of identifying, for detecting location information as an automatic response to said identifying said first device, said site-detection means having an output signal that is indicative of said location information that designates a remote site unsupported by said system;
means, responsive to said output signal of said site-detection means, for automatically accessing said remote site via transmission lines; and
storage means for receiving said driver software downloaded from said remote site via said transmission lines.[8]
Google argued that asserted claim was patent ineligible because it was directed to the abstract idea of “connecting a device to a computer, determining that the device requires driver software, locating the desired driver software on the device manufacturer’s website and downloading the desired driver software.”[9] Complainant Enterprise Systems Technologies SARL responded that claim construction needed to be resolved prior to addressing the §101 issue because Google’s arguments were based upon Google’s proposed claim constructions. The Office of Unfair Imports Investigations (OUII) agreed with the complainants, “because the parties dispute the correct function and corresponding structures for the means-plus-function limitations in claim 13, claim construction is necessary prior to a determination on patent eligibility.”[10]
Ultimately, ALJ Lord denied Google’s motion for summary determination because claim construction had not occurred.[11] ALJ Lord wrote:
The dispute boils down to whether one of ordinary skill in the art would understand the specification to disclose specific algorithmic structures corresponding to certain means-plus-function limitations, or merely a generic computer. Google’s arguments concerning patent eligibility under §101 largely depend on the conclusion that claim 13 encompasses a generic computer rather than a specific computer system with defined structure. I find, therefore, that resolution of the claim construction dispute, which involves factual determinations, is necessary to determine whether claim 13 is directed toward a patent-ineligible abstract idea.[12]
Network Devices, Related Software and Components Thereof, (337-TA-963)
In Network Devices, Related Software and Components Thereof, respondent Arista Networks Inc. filed a summary determination motion to invalidate U.S. Patent No. 7,340,597 (the ’597 Patent) under 35 U.S.C. § 101.[13] The ’597 Patent relates to securing a communications device using a logging module. Asserted claim 39 states:
39. A method comprising:
detecting a change in a configuration of a subsystem of a communications device wherein a logging module is coupled to said subsystem and said detecting is performed at the logging module; and
communicating information regarding the change comprises causing said logging module to communicate the change information.[14]
Arista argued that claim 39 “highlight[s] the abstract idea Cisco attempts to preempt: detecting a change in a configuration and communicating information about that change.”[15] Complainant Cisco Systems Inc. responded that “the claims do not cover the mere idea of detecting and communicating change, but instead are directed to a specially arranged ‘communications device’ that contains a ‘logging module’ coupled to a ‘subsystem’ of that communications device. ...”[16] The OUII opposed Arista’s motion because “Arista [had] not adequately shown that claim construction is unnecessary.”[17] OUII further noted that most of Arista’s supplemental memorandum is devoted to claim construction and that “there is a factual dispute between the parties about what a person of ordinary skill in the art would consider the scope of the asserted claims to be.”[18]
As in Communications or Computing Devices and Components Thereof, ALJ Shaw denied Arista's motion because claim construction had not occurred. ALJ Shaw wrote “there remains a genuine issue of material fact as to what a person of ordinary skill in the art would consider the scope of the asserted claims to be and the asserted claims of the ’597 patent have not yet been construed, it is the determination of the administrative law judge that Arista has failed to show it is entitled to summary determination as a matter of law.”[19]
Arista re-raised this argument at the evidentiary hearing, but it was summarily rejected a second time.[20] ALJ Shaw held that “the ’597 patent is directed to a specific thing, i.e., a communications device with a specific arrangement of components within the device, including a logging module and a device subsystem that the logging module is coupled to and monitors, and not an abstract idea.”[21] Respondent Arista has petitioned the commission to review ALJ’s application of the Alice test.[22]
Activity Tracking Devices, Systems and Components Thereof
In Activity Tracking Devices, Systems and Components Thereof, respondents Fitbit Inc., Flextronics International Ltd. and Flextronics Sales & Marketing (A-P) Ltd. filed a motion for summary determination that U.S. Patent Nos. 8,398,546 (the ’546 Patent) and 8,446,275 (the ’275 Patent)[23] were directed to ineligible subject matter under 35 U.S.C. § 101.[24] The OUII supported Fitbit’s motion.
Generally, the ’546 Patent relates to “a nutrition and activity management system that monitors energy expenditure through the use of a body-mounted sensing apparatus.”[25] For example, claim 1 of the ’546 patent states:
1. A system to provide feedback for an individual's weight-loss goal, said system comprising:
a. a wearable sensor device for detecting data; and
b. a processing unit in electronic communication with said sensor device, said processing unit configured to accomplish the following steps, thus providing said feedback:(i) derive physiological and contextual data of the individual from data detected by said sensor device;
(ii) prompt said individual to establish a weight-loss goal;
(iii) generate a first suggestion to engage in an activity to assist said individual to achieve said weight-loss goal;
(iv) determine weight-loss;
(v) generate a second suggestion to engage in an activity to assist said individual to achieve said weight-loss goal if said weight-loss goal is not progressing toward the goal;wherein said second suggestion is based upon a determination of whether or not the individual complied with said first suggestion; and
wherein said determination of whether or not the individual complied with said first suggestion is based on said derived physiological and contextual data of the individual.[26]
The ’275 Patent generally relates to “health and wellness management techniques and devices configured for use with a data-capable personal worn or carried device.”[27] For example, claim 1 of the ’275 Patent states:
1. A method comprising:
receiving data representing a profile defining parameters upon which a target score is established based on one or more health-related activities;
acquiring data representing one or more subsets of acquired parameters based on one or more sensors disposed in a wearable computing device;
determining data representing values for the one or more subsets of the acquired parameters based on reference values for the parameters set forth in the profile;
calculating at a first processor a score based on data representing the values, the score representing an attained portion of the one or more health-related activities;
causing presentation of a representation of the score relative to the target score; and
adjusting a determination upon which to modify the target score,
wherein the target score is indicative of one or more standards against which to compare one or more groups of the values aggregated to form the score. [28]
ALJ Lord began by holding that no presumption of validity applies in the context of §101.[29] ALJ Lord also noted there were no claim construction issues because claim construction had already been completed.[30] This enabled ALJ Lord to apply two step test articulated in Alice which lead to the conclusion that both the ’546 and the ’275 Patents claimed ineligible subject matter.[31]
Step one, ALJ Lord concluded both patents claimed abstract ideas. Regarding the ’546 Patent, ALJ Lord noted that the claims relate to general steps for collecting and recording information that previously was done by human minds and hands.[32] Further, she wrote “[i]ndeed, a system for making suggestions based on calculating and comparing caloric intake and expenditure using nutrition and activity levels describes the core of any realistic weight loss program, and cannot be monopolized by Jawbone.”[33] ALJ Lord also concluded that the ’275 patent claimed an abstract idea, i.e., “collecting information about an individual’s health status, assigning a score to the individual and then comparing that to a target score to provide feedback on various purported measures of health and wellness.”[34] Again ALJ Lord noted that the claimed activities could be performed by humans without the aid of computers.[35]
Step two, ALJ Lord determined, neither the ’546 Patent nor the ’275 patent had an inventive concept to take the claims into the realm of patent eligibility.[36] Regarding the ’546 Patent, ALJ Lord held that claim 1 did not disclose an inventive concept and that the dependent claims only described “routine additional steps.”[37] Further, the processors and sensors required by the claims lacked specific limitations because the specification described them as generic devices, e.g., defining a microprocessor as a microcontroller, or any other device that can be programmed to perform the functionality described herein.[38] With respect to the ’275 Patent, ALJ Lord wrote that “the claims provide no meaningful limitations on the high-level description of the claimed invention” and that complainant Jawbone had not identified a technological disclosure that would make the abstract idea of calculating target health and wellness scores using electronic media patent eligible.[39]
Complainants have petitioned the commission to review the ALJ Lord’s initial determination.[40]
Commentary
While the commission has not weighed in patent eligibility since Alice, the recent initial determinations in Network Devices, Related Software and Components Thereof and Activity Tracking Devices, Systems and Components Thereof, presents the commission with two opportunities to do so. The potential review of Activity Tracking Devices, Systems and Components Thereof presents an important question to the commission — does the presumption of validity apply in the context of §101? There is a spit of authority on this issue in the district courts, but we will have to wait and see the commission’s point of view.[41]
These investigations also highlight the importance of claim construction in an Alice challenge. In both Communications or Computing Devices and Components Thereof and Network Devices, Related Software and Components Thereof, summary determination was denied merely because claim construction had not occurred. In contrast, summary determination was appropriate in Activity Tracking Devices, Systems and Components Thereof because claim construction had been performed. The fact that claim construction is often necessary may present issues for future respondents because some ALJs do not routinely enter claim construction orders prior to the evidentiary hearing.
[1] See Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).
[2] Activity Tracking Devices, Systems, and Components Thereof, 337-TA-963, Order No. 40 at n.3 (March 3, 2016).
[3] Network Devices, Related Software and Components Thereof, 337-TA-944, Public Initial Determination at 139 (March 2, 2016).
[4] Activity Tracking Devices, Systems and Components Thereof, 337-TA-963, Order No. 40 at 32 (March 3, 2016).
[5] Id. at 17.
[6] Communications or Computing Devices and Components Thereof, 337-TA-925, Order No. 32 at 1 (May 19, 2015).
[7] Id.
[8] U.S. Patent No. 5,870,610 at claim 13.
[9] Communications or Computing Devices and Components Thereof, 337-TA-925, Order No. 32 at 4 (May 19, 2015).
[10] Id. at 5.
[11] Id. at 6.
[12] Id. (internal citations omitted).
[13] Network Devices, Related Software and Components Thereof, 337-TA-944, Order No. 14 (July 29, 2015).
[14] U.S. Patent No. 7,340,597 at claim 39.
[15] Network Devices, Related Software and Components Thereof, 337-TA-944, Order No. 14 at 3 (July 29, 2015).
[16] Id. at 4.
[17] Id.
[18] Id.
[19] Id. at 4-5.
[20] Network Devices, Related Software and Components Thereof, 337-TA-944, Public Initial Determination at 139 (March 2, 2016).
[21] Id.
[22] Network Devices, Related Software and Components Thereof, 337-TA-944, Public Version of Respondent Arista Networks, Inc.'s Petition for Review of Initial Determination on Violation of Section 337 at 93-97 (February 29, 2016).
[23] Fitbit’s motion also included U.S. Patent No. 8,793,522 which was terminated prior to the ALJ’s order. See Activity Tracking Devices, Systems, and Components Thereof, 337-TA-963, Order No. 40 at n.1 (March 3, 2016)
[24] Activity Tracking Devices, Systems and Components Thereof, 337-TA-963, Order No. 40 (March 3, 2016).
[25] Id. at 5.
[26] U.S. Patent No. 8,398,546 at claim 1.
[27] Activity Tracking Devices, Systems, and Components Thereof, 337-TA-963, Order No. 40 at 10 (March 3, 2016) (internal citations omitted).
[28] U.S. Patent No. 8,446,275 at claim 1.
[29] Id. 17
[30] Id. at 16.
[31] Activity Tracking Devices, Systems, and Components Thereof, 337-TA-963, Order No. 40 at 20-32 (March 3, 2016) (internal citations omitted).
[32] Id. at 20.
[33] Id. at 24.
[34] Id. at 29.
[35] Id.
[36] Id. at 24-28, 30-31.
[37] Id. at 24 (internal citations omitted).
[38] Id. at 25-26 (internal citations omitted).
[39] Id. at 30.
[40] Activity Tracking Devices, Systems, and Components Thereof, 337-TA-963, Complainants’ Petition for Review of Initial Determination Granting Fitbit’s Motion for Summary Determination on 101 Grounds (March 10, 2016).
[41] “As a result of this deafening silence, district courts, not surprisingly, are split over the standard of proof applicable to § 101 challenges.” In re TLI Commc'ns LLC Patent Litig., 87 F. Supp. 3d 773, 797 (E.D. Va. 2015); See also, e.g., Genetic Techs. Ltd. v. Bristol–Myers Squibb Co., 72 F.Supp.3d 521, 526–27 (D.Del. Oct. 30, 2014) (“[T]o grant dismissal of a patent infringement suit at the pleading stage for lack of patentable subject matter, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.” (internal quotation marks and citations omitted)); Data Distrib. Techs., LLC v. BRER Affiliates, Inc., 2014 WL 4162765, at *5 (D.N.J. Aug. 19, 2014); Calif. Institute of Tech. v. Hughes Commc'ns, Inc., No. 2:13–cv–07245, 59 F.Supp.3d 974, 978 n. 6, (C.D.Cal. Nov. 3, 2014) (arguing that “this Court believes that the clear and convincing standard does not apply to § 101 analysis, because § 101 eligibility is a question of law” and “[t]ellingly, the Supreme Court has never mentioned the clear and convincing standard in its post-i4i § 101 decisions”); CertusView Techs., LLC v. S & N Locating Servs., LLC, 2015 WL 269427, at *14 n. 6 (E.D.Va. Jan. 21, 2015) (acknowledging the “persuasiveness of such reasoning” [of not applying the clear and convincing evidence standard to § 101 determinations] but noting that, in the end, there is no “authority indicating that the presumption of validity no longer applies to challenges to a patent's validity under section 101.”).