Is Invention “Directed To” An Abstract Idea? Look To The Specification
Addressing the various factors a court may consider in order to determine whether a claim is “directed to” an abstract idea, the US Court of Appeals for the Federal Circuit upheld the district court’s dismissal of all claims based on patent ineligibility under 35 USC § 101. ChargePoint, Inc. v. SemaConnect, Inc., Case No. 18-1739 (Fed. Cir. Mar. 28, 2019) (Prost, CJ).
ChargePoint brought suit against SemaConnect for infringement of four patents relating to charging stations for electric vehicles. The four patents described individual charging stations that were networked together to allow site hosts, drivers and utility companies to communicate in real time to address the needs and preferences of each entity. A system of networked charging stations allowed each station to be managed from a central location, allowed drivers to locate charging stations in advance, and allowed all users to interact intelligently with the electricity grid. Upon consideration of SemaConnect’s motion to dismiss under Fed. R. Civ. P. 12(b)(6), the district court found all asserted claims to be directed to patent-ineligible subject matter under 35 USC § 101. ChargePoint appealed.
The Federal Circuit affirmed, confirming that “[s]ubject matter eligibility under § 101 may be determined at the Rule 12(b)(6) stage of a case.” The Court then proceeded to the Mayo/Alice two-step analysis. At step one, the Court emphasized that it is “not enough to merely identify a patent-ineligible concept underlying the claim; [the inquiry is] what the claim is ‘directed to.’” In order to find the “focus” of the claim, it is necessary to balance the specification and claim language. The specification is “helpful in illuminating what a claim is ‘directed to’ [but] reliance on the specification must always yield to the claim language in identifying [the] focus.” The ultimate consideration when dealing with the judicial exceptions is “one of pre-emption”—whether the claims cover subject matter that “the patent law does not authorize anyone to preempt.”
With that disclaimer, the Court identified three areas where the specification may be useful in determining whether the claims are “directed to” an abstract idea. First, the inquiry may require claim construction, which often includes consideration of the specification. Second, the “directed to” inquiry may involve looking to the specification to understand “the problem facing the inventor and, ultimately, what the patent describes as the invention.” Finally, the specification may be useful in determining why any tangible components recited in method claims are actually “conduits for the abstract idea.”
After reviewing the specifications of the asserted patents to identify the problem posed and what the patent identifies as the invention, the Federal Circuit agreed with the district court’s analysis that the claims are directed to the abstract idea of “communicating over a network for device interaction.” Keeping the focus on preemption, the Court next turned to the claim language and found that the claims would “preempt the use of any networked charging stations.”
In step two of the Alice inquiry, the Federal Circuit again turned to the specification to identify an inventive concept. The Court looked at the stated problem, which it identified as “the sparse availability of charging stations and the need for more widespread stations; the need for a communication network that facilitates finding an available charging station, controlling the station, and paying for electricity; and the need for real time communication to effectively implement demand response and vehicle-to-grid transfer.” Unfortunately for ChargePoint, the alleged “inventive concept” that solves these problems is that the charging stations are network controlled—the abstract idea itself. Thus, the Court found the claims patent ineligible because “a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ that that ineligible concept.”