Federal Circuit rules claims defining information-based result are patent ineligible

By John M. Rogitz
August 8, 2016

cafc-federal-circuit-topElectric Power Group LLC v. Alstom S.A., 2015-1778 is a precedential case from the U.S. Court of Appeals for the Federal Circuit that holds that claims directed to collecting and presenting information from a power grid, though “lengthy and numerous,” “do not go beyond requiring the collection, analysis, and display of available information in a particular field.”  Rather, the claims state “those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under §101.”

The CAFC panel was made up of Judges Taranot, Bryson and Stoll, with Judge Taranto writing for the unanimous panel.

Representative Claim

A representative (and indeed lengthy) claim in this case was:

12.  A method of detecting events on an inter-connected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measurements from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diagnoses of events and associated ones of the metrics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stability metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.

The CAFC’s Opinion

According to the CAFC, “we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis [emphasis added].” Here, what the precise nature of that “particular tool” might be to confer patent-eligibility is not clear, but it seems to possibly relate to a particular user interface. Such user interfaces, while containing some particularity, can still be recited in broad enough terms to encompass many plausible ways of practicing the invention. Note that the “displaying” steps of the above claim – steps five and six – do not require a monitor much less a particular UI (even in the most general terms), which typically would include various selectors to input commands to the computer.

The foregoing is bolstered by the CAFC’s declaration that “[t]he claims…do not require an arguably inventive device or technique for displaying information, unlike the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),” which found an “inventive concept in modification of conventional mechanics behind website display to produce dual-source integrated hybrid display.” The CAFC further explained that the claims at issue in the present case do not “require an arguably inventive distribution of functionality within a network, thus distinguishing the claims at issue from those in Bascom…[which found] sufficient inventive concept in ‘the installation of a filtering tool at a specific location, remote from the end users, with customizable filtering features specific to each end user’…The claims in this case specify what information in the power-grid field it is desirable to gather, analyze, and display…but they do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology.”

Here, the CAFC appears to distinguish novel types of data collected from specific novel devices, or techniques for displaying that information, as a predicate for conferring eligibility.

The CAFC then approvingly noted that the district court invoked “an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them.” As the district court reasoned, “‘there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.’” According to the CAFC, the claims at issue in this case do the latter, namely, “rather than claiming ‘some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,’ some ‘particular implementation,’ they ‘purport to monopolize every potential solution to the problem’…Whereas patenting a particular solution ‘would incentivize further innovation in the form of alternative methods for achieving the same result’… allowing claims like [the ones at issue here] would ‘inhibit[] innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.’”

According to the CAFC, the district court’s analysis above “is one helpful way of double-checking the application of the Supreme Court’s framework to particular claims.”

 

The Author

John M. Rogitz

John M. Rogitz is of counsel to Rogitz & Associates and is a registered patent attorney. His patent background includes preparation and prosecution of a large number of patent applications for Fortune 500 high-tech institutions in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. John writes frequently for various publications on developments in patent law. He also regularly appears as a guest lecturer on intellectual property at DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, John worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments.

  1. Ben August 9, 2016 3:41 pm

    Not much discussion of a case that in three months may be referenced in 50% of all 3600 office actions…

  2. Ben August 9, 2016 3:43 pm

    Electric Power Group is Smartgene on steroids.

  3. Paul Cole August 10, 2016 6:09 am

    I agree with Ben that this is an important opinion which is likely to be influential and to be frequently cited in later cases.

    The opinion is admirably clear and indicates what is needed for eligibility. If we do not follow its guidance then more fool us.

  4. Curious August 10, 2016 11:04 am

    Not much discussion of a case that in three months may be referenced in 50% of all 3600 office actions…
    Nearly every patent application that I’m prosecuting before TC 3600 (business methods) is allegedly “similar” to the abstract ideas discussed in at least 4 or 5 Federal Circuit decisions. I suspect that this decision will be added to the laundry list of other decisions cited by TC 3600 examiners.

    The opinion is admirably clear and indicates what is needed for eligibility. If we do not follow its guidance then more fool us.
    No … it is just another one of the “it is an abstract idea because I say it is” case. The Supreme Court gave ZERO guidance, and all these decisions in which claims are being invalidated under 35 USC 101 are inconsistent with the plain language of 35 USC 101. Sorry, but the Courts making up sh^t as they go along is not the guidance I’m looking for.

    This decision could be read as holding that information processing (i.e., the premiere technology of the 21st century) is unpatentable. This holding is inconsistent with the majority opinions in Bilski and Alice which rejected the call from the minority opinions to make business methods per se ineligible.

  5. Ben August 10, 2016 1:21 pm

    This holding is inconsistent with the majority opinions in Bilski and Alice which rejected the call from the minority opinions to make business methods per se ineligible.

    Where does the opinion say or suggest that business methods are per se ineligible?

    The opinion suggests that claiming results, or claiming computers that result in results will result in a claim directed to an abstraction. The wise will move away from such claiming.

  6. Curious August 10, 2016 2:21 pm

    Where does the opinion say or suggest that business methods are per se ineligible?
    What is a business method but a subset of the genus of data processing inventions? While no one has put together a definition that everybody can agree on as to what constitutes a “business method,” I suspect that “computer-functionality improvements” (see Enfish) would be outside that definition.

    Under the AIA, a covered business method (CBM) patent is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” but is not for a “technological” invention. Under that definition and based upon the apparent holding of this case, then all CBM’s are directed to patent ineligible subject matter. Why is there is a need for a CBM proceeding at the PTAB when all CBM patents would be deemed patent ineligible.

    The opinion suggests that claiming results, or claiming computers that result in results will result in a claim directed to an abstraction. The wise will move away from such claiming.
    You can only claim what you invent. If your invention lies in data processing, then that is what you can claim. Adding limitations, not directed to data processing so as to get around 35 USC 101, merely adds giant loopholes by which competitors can exploit in order not to infringe what the invention is really directed to.

    In essence, you are suggesting that the “wise” should emasculate the scope and worth of their patents in order to kowtow to these Court-made requirements that are pulled out of thin air. Nice.

  7. Paul Cole August 10, 2016 2:27 pm

    There are many passages in this opinion which are absolutely classic statements of principle, equally applicable in Europe as in the US, and which we would be well-advised to follow, e.g.

    “The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract
    ideas that use computers as tools.”

    Whatever your views on the Supreme Court, the Federal Circuit has recently given much useful guidance. Unfortunately many patents which come before the Court were written when State Street was still the leading authority, and omit information and claim features which would nowadays be regarded as essential.

  8. Curious August 10, 2016 2:32 pm

    Gene quoted this passage from the decision:
    But, the court reasoned, “there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.” Id. Electric Power Group’s asserted claims, the court observed, do the latter: rather than claiming “some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,” some “particular implementation,” they “purport to monopolize every potential solution to the problem”—any way of effectively monitoring multiple sources on a power grid.

    What horsesh&t. These claims hardly “monopolize every potential solution” to “monitoring multiple sources on a power grid.” Either the District Court judge was deliberately untruthful or the judge didn’t understand the claims and/or the technology. Any reasonably competent patent attorney could suggest several ways of “monitoring multiple sources on a power grid” that didn’t infringe these clams.

    BTW — this leads to a possible way to defeat this case if it is cited. Specifically, if it is cited, you first need to get, in the record, the alleged “problem” to which the claims purportedly solve. Once that happens, you need to find other solutions, not covered by the claims, that solve that problem. With that, you have your distinction. That being said, the Federal Circuit described the above analysis as “one helpful way of double-checking the application of the Supreme Court’s framework to particular claims.” (i.e., the decision didn’t solely hinge upon this analysis). However, if one can establish that this “double check” doesn’t produce the expected result, then there is strong argument that the other analysis is also incorrect.

  9. Curious August 10, 2016 2:41 pm

    BTW — for all of those who criticized the “machine or transformation” test, strict application of the “machine or transformation test” would have been much more preferable to the situation we have now.

    Also, as a practice note, don’t treat the “machine or transformation” test as dead letter law. The Supreme Court still acknowledges that this test is a useful and important clue. One way I would use MOT is to attack characterizations of the “abstract idea” to which the claim is directed. If the characterization of the abstract idea involves a machine or transformation, then my argument would be that the “abstract idea” is not, in fact, an idea or abstract. For example, “monitoring multiple sources on a power grid” necessarily involves a multitude of machines (i.e., both the machines of the power grid as well as the monitoring devices).

  10. Anon August 10, 2016 3:57 pm

    Curious @ 9,

    As recently displayed for Gene, Alice shoots your argument to pieces because items that were stipulated to pass the machine category portion of 101 were nonetheless found to be “abstract.”

  11. step back August 10, 2016 4:32 pm

    Ben @1 and @2

    You are right of course.

    This is one of those penultimate anti-science, anti-rational thought nut case decisions by our down the rabbit hole judiciary.

    Consider some of the more “fundamental” (if I may use that word in a nonfundamentalist sense) inventive contributions to the world of science:

    1) The balance scale: a physical device that allowed humans to determine with much increased accuracy whether one thing is heavier than or equal in weigh to another. The weights already exist and are a phenomenon of nature (aka gravity) but the ability to detect same greatly changed the world (i.e. commerce, weights and measures).

    2) The graduated ruler as applied to lengths rather than weights (ditto)

    3) The microscope: allowed us to see little things

    4) The telescope: allowed Galileo to see the big picture

    5) The optical prism: allowed us to understand that radiation can be separated out according to frequency (led to radio, TV and the Internet)

    Now comes the enlightened judiciary to tell us that tools which enable us to see/understand things we otherwise could not are merely “abstract” and not worthy of patents. Which means future inventors will be encouraged to keep such things as trade secrets.

    Galileo and Newton are turning in their graves.

    (Newton understood that “If I have seen further it is because I stood on the shoulders of giants”.)

    https://en.wikiquote.org/wiki/Isaac_Newton#Quotes

  12. Curious August 10, 2016 5:00 pm

    As recently displayed for Gene, Alice shoots your argument to pieces because items that were stipulated to pass the machine category portion of 101 were nonetheless found to be “abstract.”
    You missed my point, which was that the MOT test would have better than the mess we have now. Any computer-implemented invention could have been claimed to pass the MOT test.

  13. Ben August 10, 2016 5:35 pm

    “You can only claim what you invent. ”

    And you cannot invent a result.

  14. Curious August 10, 2016 5:54 pm

    And you cannot invent a result.
    What does that even mean? The claim (partially) reproduced above and at issue in this decision does not just claim a result. You need to clarify.

  15. Night Writer August 10, 2016 9:06 pm

    Taranto and Stoll again. Taranto has a long list of findings of fact about science that are worse than saying the sun spins around the Earth. What an unethical judge. He knows it and does this because he wants to burn down patents.

    Taranto: all inventions that merely simulate human thought are per se ineligible. Reality: –if you don’t know, then you should go back to college.

  16. Night Writer August 10, 2016 10:26 pm

    And again, what we see is Taranto (and sidekick Stoll) trying to skip one skilled in the art.

    The fact is that Taranto is totally FOS. I am one skilled in the art and reading the claims informs me of the meets and bounds of the claim and what know technical solutions could be used in view of spec.

    Just judicial activism at its worst.

  17. step back August 11, 2016 3:50 am

    It is embarrassing to have a US judiciary so incompetent they don’t even know they are at the lowest levels of incompetency.

    SCOTUS never authorized these clowns to perform the advanced divine-level analysis that only the Supreme “we” of the SCOTUS can do.

    Re-read Alice carefully.
    Clarence the Clown said “we” do this (Alice part 1) and “we” do that (Alice part 2). He never delegated power to the lower beings (denizens of the CAFC, the District courts and the even lower PTO) to perform the same divinely inspired acts (determining what a claim is “directed to” and determining if a claim contains something “significantly more”). So all these clowns are doing the Alice Theme Warp Dance without Supreme Permission. (Check out the video 😉 )

    http://aliona-vilani.org/media/video/strictly-come-dancing/pro-dance-the-time-warp/

  18. Night Writer August 11, 2016 7:34 am

    That video is pretty funny. (I’ll bet that Stoll took a call from Obama with him saying, we need to get this patent problem under control. And, her swearing that she will burn them down for the appointment. Stoll at Finnegan was one nasty creature.)

    But, what I notice is that none of these people will defend their positions. They make up this wild stuff and then they cannot debate what they have done. They hid. What a bunch of unethical scoundrels. Sold out their soul to get an appointment at the Fed. Cir.

  19. step back August 12, 2016 12:43 am

    Night Writer @18,

    I know it is hard to believe there could be any other explanation besides the sell out story –and probably you are hoping against hope that one of the alternate theories can’t possibly be true– that people are that stoop8, that judges at the Federal District Court and Circuit levels are stoop8 enough to buy into this fable about real things not being real but rather being abstract because Clarence and friends have pointed their “directed to” ray guns at the Eiffel Tower, at the Empire State Building, at Niagara Falls and made them all disappear along with physical computer networks, real time sensors (e.g. those of this EPG v. Alstom case), etc. and because Clarence and his circus pals have also shifted the burden of proof so inventors have to prove their real devices and processes are not abstract.

    But it’s true.
    All that has happened and more.
    People are that stoop8.
    Sorry. 🙁

    Clarence and his three ring high wire buddies have done exactly that.

    I talk to people on the street.
    I have developed this “Sixth Sense”.
    I see stoop8 people everywhere.
    They don’t know they are stoop8.
    They will never admit to having been stoop8.
    They believe in aliens.
    They believe in world wide conspiracy theories among climate scientists.
    They believe they are exceptional.
    They believe they don’t have to spend yeas in college studying complex math, physics, chemistry, thermodynamics, biology, computer science and instead they understand that the magic words, “Apply it” uttered to any 2nd year engineering geek is enough to make it so.

  20. Night Writer August 12, 2016 4:20 pm

    @19 step back: Actually, I hope you are right. Then there is hope. In the sell-out theory, there is no hope.

    Just unbelievable that Obama had the opportunity to create a world-class court for patents and instead appointed Taranto and Stoll.

  21. step back August 12, 2016 6:09 pm

    @20 Night: I think Obama believes in the “unleashing” theory of USA superior ingenuity as does Hilarious as well. It says, cut the government red tape and then the held back natural genius reserved for Americans only will be released like a tsunami breaking out from a sprung open dam to bring a new century of American “innovation” and prosperity to our country.

    They see patents as one of those unnecessary government restraints that, according to our SCOTeti (Supreme Courtesans of the empire, taken individually) and the tag along Fed Circus clown, “tend to stifle innovation more than they promote it”.

    The trouble with this dam unleashing fiction is that the dam is a fiction (an abstract dream), the pent up waters of ingenuity behind it are a fiction and the idea that everything is mere abstract ideas shooting out of an uncorked champagne bottle is also a fiction.

    Sciencing the heck out stuff is hard, slow, arduous work –not “The Martian”/ “Moonshot” pipe dream of Presidents and Libertarians alike.

    http://patentu.blogspot.com/2016/05/moonshooting-ourselves-in-foot.html