CAFC Rules Mass Transit Fare System Claims Patent Ineligible

Smart Sys. Innovations, LLC v. Chi. Transit Auth., No. 2016-1233, 2017 (Fed. Cir. Oct. 18, 2017) (Before Reyna, Linn, and Wallach, J.) (Opinion for the court, Wallach, J.) (Dissenting in part and concurring in part, Linn, J.).

The majority of a Federal Circuit panel affirmed a district court’s holding that several claims of four related patents “are directed to an abstract idea and otherwise lack an inventive concept, such that they are patent ineligible under § 101.”

The four patents, owned by SSI, belong to the same patent family and are generally directed to “[a]n open-payment fare system [that] allows riders to conveniently and quickly access mass transit by using existing bankcards,” eliminating the need for dedicated cards, tickets, and tokens. More specifically, the ’003 and ’617 patents provide a system and method for regulating entry in a transit system using information from a bankcard. The ’816 and ’390 patents provide a system and method for processing transfer rides associated with a public transit network, which “preprocess[es] transactions to consolidate or eliminate unnecessary transactions with a financial institution clearing and settlement network.”

“Under Alice step one, ‘claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter,” such as, in this case, an abstract idea. SSI argued that the patents are not directed to abstract ideas “because the ’003 and ’617 patents disclose inventions that ‘operate in the tangible world’ and satisfy a public demand for more convenient travel that did not exist in the prior art.” The ’390 and ’816 patents “overcome challenges created by the storage limitations that exist with conventional tangible bankcards.”

The majority first noted the district court’s holding. “Stripped of the technical jargon that broadly describes non-inventive elements (e.g., the ‘interfaces’ and ‘processing systems’), and further shorn of the typically obtuse syntax of patents, the patents here really only cover an abstract concept: paying for a subway or bus ride with a credit card.” The majority added to this characterization of the claimed inventions. “Taken together, the…[c]laims are directed to the formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions.” More specifically, “the ’003 and ’617 patents involve acquiring identification data from a bankcard, using the data to verify the validity of the bankcard, and denying access to a transit system if the bankcard is invalid.” Likewise, “the ’816 patent involve[s] acquiring identification data from a bankcard and funding a transit ride from one of multiple balances associated with that bankcard,” and “the ’390 patent involve[s] identifying whether a presented bankcard is associated with a timepass (e.g., a monthly subway card) and, if the timepass is found, charging a different fare.”

The majority thus found that the claims are “directed to the collection, storage, and recognition of data” and likened the claims to those found abstract and patent-ineligible in Electric Power Group, LLC v. Alstom S.A. Despite the claims applying “to a particular, concrete field—namely, mass transit,” the claims merely invoke computers in the collection and arrangement of data. Limiting the field of use to mass transit systems does not permit the claims to escape the abstract idea exception under Alice step one.

The second step of Alice requires the determination of whether the claim elements, when viewed individually and as an ordered combination, contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” The majority found that the claims fail to provide an inventive concept because they merely teach the use of, for example, a “processor,” an “interface,” “memory,” and “data.” SSI’s argument that its claims satisfy the machine-or-transformation test also failed because the claims disclose the use of generic computer components and machinery. Accordingly, the majority held that the claims “are ‘directed to an abstract idea’ and ‘merely requir[e] generic computer implementation,’ [such that] they ‘do[] not move into section 101 eligibility territory.”

Judge Linn concurred in part and dissented in part. Judge Linn emphasized that the non-statutory exceptions to patentability are intended to foreclose only those claims that “preempt and thereby preclude or inhibit human ingenuity with regard to basic building blocks of scientific or technological activating” and thus “are intended to be read narrowly.” Judge Linn “[r]egrettably” concurred with respect to the ’816 and ’390 patents, stating that he is bound by precedent, despite his disagreement “with such a categorical exclusion” of “what [the courts] have generally characterized as a ‘fundamental economic practice long prevalent in our system of commerce.” Regarding the ’003 and ’617 patents, Judge Linn found the majority’s characterization of the claims to be “at such a high level of abstraction as to overlook and misstate what the inventors considered to be their invention” such that several limitations, including those explicitly tying the recited method to a transit system, were ignored. Judge Linn interpreted the ’003 and ’617 patents to not be directed to an abstract financial transaction and would have found the claims of those patents directed to patent eligible subject matter.

In a patent-eligibility analysis under Alice, characterizing what the claims are “directed to” is a key aspect of inquiry for abstract ideas. Overly broad and “categorical” characterizations of the claimed invention may be detrimental to the patentability of claims.

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Discuss this

There are currently 35 Comments comments. Join the discussion.

  1. Curious October 29, 2017 9:01 am

    “Taken together, the…[c]laims are directed to the formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions.”
    Typical Federal Circuit — oversimplify the claims until they reach something that can described as an abstract idea.

    Assuming that a rewrite of 35 USC 101 is not possible, if I was to suggest a couple tests regarding what constitutes an “abstract idea,” these would include:

    1) If the alleged “abstract idea” covers the prior art, then your abstract idea is not reflective of the invention and must be disregarded.
    2) if the description of the alleged “abstract idea” refers to technology, then you have not articulated an abstract idea.

  2. Ternary October 29, 2017 1:40 pm

    “the patents here really only cover an abstract concept: paying for a subway or bus ride with a credit card.” The Courts do no explain why paying with a credit card is an abstract concept. What they mean of course is that doing the “payment with a computer” is “abstract.”

    Many people believe they know what well-understood, conventional and routine is. (“I know it when I see it”). Related to computers, many people believe that computers perform logic steps on 0s and 1s. (and in the form of a program that is too simple and not deserving of a patent.) But they are wrong. Computers do not perform logic and they ‘don’t know’ 0s and 1s. Digital computers are deterministic switching machines that switch signals between pre-determined states. They are absolutely not abstract.

    No one in her/his right mind would declare a machine, constructed of wheels, gears, levers, motors and the like being directed to an abstract idea. For instance 9,765,456 is directed to a knitting machine. Knitting? Humans have been knitting for ages! Now there is potentially an invention directed to an abstract idea (routine, conventional and well understood, by some bright people at least)

    The whole Alice case and its applications again and again read like amateurs explaining “to the folks” how a computer works and basically complaining that “it is all too simple and not worth a patent.” But they cannot really articulate what is technically “abstract” in a computer, hence relying on being “directed to an abstract idea.”

  3. Benny October 30, 2017 6:22 am

    Ternary,
    Not accurate. A computer is a state machine which switches logic ones and zeros. The state machine is not an abstract concept. Whether a method of setting up and using the machine – a sequence of instructions a.k.a software – is abstract is, it would seem, currently open to debate.

  4. Anon October 30, 2017 8:25 am

    Benny,

    Methods of uses (a rather poor attempt at saying that software IS a method as opposed to being a manufacture) is STILL patent eligible.

    See 35 USC 100.

  5. Benny October 30, 2017 9:41 am

    Anon,
    some methods are patentable, some methods are not – methods for calculating parameters for example. I’ve written thousands of lines of code in my career, never looked at a sequence of instructions as manufacture. Maybe because it isn’t – it’s a process.

  6. Ternary October 30, 2017 9:59 am

    Benny,
    Take a scope and a probe and test any input and output of a computer circuit. Not a 0 or 1 to be found. Only signals, which manufacturers sensibly call LOW and HIGH and for which you have to peruse data sheets to find out what the actual voltages are.

    When Shannon invented design of computer circuitry by Boolean algebra in 1938, he designated circuit impedance (or ‘hinderance’ as he called it, for relays circuitry) as 0 or 1.

    The 0s and 1s, (or True and False) are human designations of signals. A computer does not ‘know’ True or False any more than it ‘knows’ about 0 or 1. You may call signals Red/Blue or John/Mary and it would not change a thing in the physical devices.

    Software is in essence a series of signals that control circuitry and force it into pre-determined physical states. Absolutely no debate if it is abstract. It is all physical.

    You confuse a model of the device with the physical device.

  7. Anon2 October 30, 2017 10:05 am

    Procounsel Reyna does it again. A patent is an ENGINEERING DOCUMENT. Rewriting the claims to convert them to legalese means that the strawman fallacy governs here. Impeach Reyna

  8. Benny October 30, 2017 10:14 am

    Ternary,
    spare me the philosophy. Nothing material changes in the state machine as it cycles through a sequence of states. Protecting the process, or sequence, is fair game but don’t try to persuade me that a computer running MS Word is patentably distinct from a computer running MS Excel – only the process is distinct.

  9. PausBrk October 30, 2017 10:48 am

    Ternary: Yes, a “knitting machine” is abstract. Just like a “flying car” is abstract. Just like a “time machine” is abstract (but it has the word machine in it!!) An implementation of a knitting machine that uses metal connected to a gear that is driven by a motor is not abstract; a flying car that uses 6 fans in a special pattern is not abstract; a time machine that uses a flux capacitor in parallel with a flux resistor is not abstract.

    Abstract: A vehicle configured to fly.
    Not abstract: A flying vehicle comprising six downward facing fans, wherein the six fans are arranged in a Genneli pattern.

  10. Anon October 30, 2017 11:06 am

    I’ve written thousands of lines of code in my career, never looked at a sequence of instructions as manufacture. “”

    You are of course wrong, Benny, and just because you have never thought of it otherwise simply does not make it so.

    You have confused yourself between a manufacture and a method of which the manufacture is actually enacted (put into action).

    There simply is a very real difference between the two.

    (I do note that this is an item that I have disagreed with Gene Quinn about, and have attempted to distinguish the easy description of software with language sounding in methods. But that is merely an artifact of language and does not change the underlying reality of what software is.

  11. Anon October 30, 2017 11:10 am

    Benny @ 7 – again, you are simply factually incorrect.

    Think of the inherency argument – under your view, machines simply would not need to be reconfigured WITH any new software prior to actually running that new software.

    When you say “spare me the philosophy” what you are really saying is that your OWN philosophy is desired to be “off limits” from any factual discussion.

    You don’t get that privilege.

  12. A Rational Person October 30, 2017 12:19 pm

    Benny@7:

    A first box, with a display and keyboard allows a user to enter and edit text on the display. The first box allows this to be done by a user by the electronic circuity within the box.

    A second box, with a display and keyboard allows a user to create and edit a spreadsheet on the display. The second box allows this to be done by a user by the electronic circuity within the box.

    Let’s call the first box a “word processor machine” and the second box a “spreadsheet machine”.

    Are the word processor and the spreadsheet processor “patentably distinct”? Even before the creation of the Federal Circuit, the word processor machine and the spreadsheet machine would be considered to be “patentably distinct” machines by most people with any knowledge of technology and patents, much less by a patent lawyer.

    So, why does it matter if software, as opposed to electronic circuitry, plays some role in making the spreadsheet machine different from the word processor machine? Under what logical, technical or legal basis should it matter?

  13. Ternary October 30, 2017 12:30 pm

    Benny, Aah, the convictions and trepidations of a programmer. Hard core technology becomes philosophy. It seems to me that you never designed a computer machine. It shows. You are a self admitted programmer, protected from the harsh world of hardware by interfaces, compilers and interpreters. Good for you. But it distorts your understanding of computers as hardware. (the old struggle between hardware and software designers?)

    Of course the physical states of a computer machine change as it cycles through a program. What do you think is happening? Magic? How do you come up with this nonsense?

    I used as an example Shannon, because in relays machine physical states visibly change (contacts open and close). In semiconductors a physical change also happens (though not as directly visible).

    A programmed computer is a machine, not a process and is not abstract. Signals that form software are not abstract.

    The issue in Alice is not that the computer or programmed machine is abstract. Even SCOTUS did not say that, though you and with you many others now spread that idea. Alice says that a computer invention may be “directed to an abstract idea.” That is a much more difficult idea to attack. Almost all inventions can be reduced to being directed to something humans have been doing for a long time.

    Computer learning for image recognition for instance is directed to the abstract idea of object recognition, something humans have been doing forever. Paying a fare with a credit card? Not so old. Using a computer for that? Perhaps obvious, but looking at the required technology, certainly not an abstract idea.

  14. Benny October 30, 2017 1:01 pm

    Ternary,
    In decades past I hand-soldered circuits with 8051’s and PIC16F series, and programmed them in assembly language. If you want to teach me digital hardware I am your student, but start where I left off.
    Rational,
    I don’t buy the premise that my computer transforms into a different physical entity every time I run a different program. By your logic, a computer concurrently running Word and Excel is patently distinct from a computer running Word and Powerpoint, etc…
    Go ahead and protect your software by any means, but don’t tell me you have invented a new machine when you run your software on the computer I designed and built. You invented a process.

  15. A Rational Person October 30, 2017 1:12 pm

    Benny@14

    By your logic, a computer concurrently running Word and Excel is patently distinct from a computer running Word and Powerpoint, etc…

    In the 1960s or 1970s, would a machine that ran Word and Excel not have been considered be considered a different machine from a machine running Word and Powerpoint? In the 1960s and 1970s, most people would consider them different machines whether or not their internal hardware was different or not, just like in the 1980s in a video arcade when a machine that allowed you to play Donkey Kong would be considered a different machine than one that allowed you to play Pac Man, regardless of the hardware inside the video game machine.

  16. A Rational Person October 30, 2017 1:17 pm

    Benny,

    Also, based on your logic, a phone and a television are the same machine since the functions of a phone and television can now be performed by a single piece of hardware, i.e., a smartphone thanks to functions previously being performed by hardware now being performed by software.

    Do you think a phone and a television are the same machine? Do you think most people before the year 2000 would think that?

  17. Benny October 30, 2017 1:27 pm

    Rational,
    you are going sideways, and your arguments have no relevance to anything I wrote. Let me try and put it as simply asI can – if you write an app that runs on my iphone you can’t claim to have invented a new species of iphone.

  18. A Rational Person October 30, 2017 1:33 pm

    Benny,

    I’m not going sideways, I’m merely taking your “arguments” to their logical conclusions which happen to be absurd.

    If write an app for an iPhone that turns the iPhone into an electronic engine that powers and automatically a car for 100 miles, are you saying I have not invented a new electronic engine?

  19. A Rational Person October 30, 2017 1:36 pm

    Benny, is it also your position that despite the fact that 35 USC 101 states;

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    That improved iPhone, an “improved machine” is not patentable?

  20. A Rational Person October 30, 2017 1:50 pm

    Benny@17

    “Let me try and put it as simply asI can – if you write an app that runs on my iphone you can’t claim to have invented a new species of iphone.”

    So you are saying that if you write an app that turns a smartphone that only has telephone functionality into a smartphone with a television functionality, the smartphone is the same machine.

    Or in, other words, in your opinion a telephone and television are the same machine. I think that would be news to most people.

  21. Benny October 30, 2017 3:42 pm

    Rational,
    you are way out of line. You cannot make a device perform a function for which it does not have the physical capability. Even an attorney can understand that. If you have made no physical change to the machine it is the same machine. Forget it, all the engineers I work with don’t need to get up early in the morning to understand the difference between a machine and the process the machine performs. Thats enough for me.

  22. Anon October 30, 2017 4:19 pm

    Benny – quite to the contrary, it is you that is way out of line.

    Software is not the execution of software.

    One cannot use a machine (with software) unless first that machine is changed and configured with the software.

    You seem to think that a machine all on its own with no changes whatsoever can be used to achieve the same effects that ANY software may provide – without first configuring the machine with the software.

    You are the one engaging in some type of “magic,” in which a first structure – with no changes – can do (as opposed to can be changed to do) ANY – and all – future improvements that may come by way of software.

    Your view is just not reality.
    Your view shows the stains of Kool-Aid drunkenness.

  23. A Rational Person October 30, 2017 4:52 pm

    Benny@21

    And further to Anon@22’s thoughts:

    “If you have made no physical change to the machine it is the same machine. Forget it, all the engineers I work with don’t need to get up early in the morning to understand the difference between a machine and the process the machine performs. Thats enough for me.”

    So your opinion is that when you add software to a computer or smartphone you make “no change to the machine.” Do you understand how software is stored on a digital storage medium? The software is stored on a digital storage medium such as a hard drive, optical drive, flash drive, etc. by changing the digital storage medium.

    It appears you think that software magically inhabits a device on which it is stored and causes the device to function in a particularly way, sort of the way devices operate in the Harry Potter stories.

  24. Night Writer October 31, 2017 5:19 am

    @2 Ternary: No one in her/his right mind would declare a machine, constructed of wheels, gears, levers, motors and the like being directed to an abstract idea. For instance 9,765,456 is directed to a knitting machine. Knitting? Humans have been knitting for ages! Now there is potentially an invention directed to an abstract idea (routine, conventional and well understood, by some bright people at least)

    You hit on a good point. You see the SCOTUS have said that anything can be done on a computer if you just think up what you want. Whereas, the SCOTUS with machines actually have to deal with the fact that they have no idea how a gear works and what it is there for. It was Stevens that said you just give it to a boy and he will get his routine work done, or a college weekend project.

    Of course, anyone that knows anything about information processing knows nothing is further from the truth.

    But, we have articulation of problem and then a trivial solution by work boy.

  25. Night Writer October 31, 2017 5:20 am

    Benny:

    Consider an equivalent machine that is hardwired. Also, consider that all electric circuits could be replaced with a general purpose circuit with A/D converters and D/A converters.

  26. Benny October 31, 2017 5:51 am

    Night,
    I didn’t think I would have to come here to explain basic engineering, but here goes, just for you. A computer is a hardwired state machine at heart. I’ll skip the bit about how ALUs are built with logic gates. The output of the state machine is entirely dependent on the sequence of input events. This sequence need not be part of the machine – it could be generated by an external computer or stored on an external memory module. An innovative sequence could be devised to make the machine sing or dance, and the innovation would lie in the sequence and not in the pre-existing state machine.
    If I were to devise such a sequence, and you were to draft a claim to protect it, how would you go about the task? Would you claim “A machine, of a type well known, comprising electrical bits an bobs, configured to sing a song”, and then devote 20 pages of the specification explaining how the machine is built, or would you start with “An innovative method of making a known and previously described machine sing” ? I’m asking not in terms of what is more likely to get past a clueless examiner, but it terms of what is the correct description.

    Rational Person appears to be telling me that if the sequence is stored in a smartphone internal memory, then I can claim to have invented a new form of smartphone, but if it is stored on the external microSD card then I have invented a new form of flash memory. If the instructions are streamed from a remote server, perhaps I have re-invented the internet (RAM storage is transitory, not worth the silicon it’s written on at the patent office).

  27. Anon October 31, 2017 8:44 am

    Benny,

    You are still (purposefully?) conflating software and the execution of software.

    YOUR philosophy is in the cross hairs – reality beckons.

  28. Benny October 31, 2017 9:00 am

    Anon,
    It is not my job nor my privilege to determine whether software, being intangible, is eligible for patent protection as a newly discovered machine. But if patent examiners or CAFC judges or PTAB boards do not find the intangible lines of code to somehow transform silicon and copper to a new device, perhaps I have provided an inkling as to where their line of reasoning comes from.

  29. Anon October 31, 2017 10:12 am

    as a newly discovered machine

    You misspeak.

    No one – and I repeat no one is saying that software unto itself belongs to the statutory category of “machine.”

    The statutory category you should recognize is “manufacture.”

    Software – just as – in fact, in the patent sense, the term of art is “equivalent” – any other “ware” is a manufacture and machine component.

    The “line of reasoning” is wrong and must not be meekly accepted. Or – even worse – promulgated as if reality is something other than what it is.

    You are attempting that very promulgation. Job, privilege, or otherwise, you are being called out for your role in the ongoing error and subsequent detriment to protection of innovation.

  30. Benny October 31, 2017 10:48 am

    Anon,
    typical Anon, to latch on a word rather than engage in the spirit of the discussion. You should have been a Talmudic scholar.
    I don’t have a “role”, as you put it. I have an opinion, to which I feel entitled regardless of whether you or Gene or Rational agree or disagree. The mere fact that I am responding is evidence that I am listening to your opinions, too.

  31. A Rational Person October 31, 2017 11:04 am

    Benny@26,

    “Rational Person appears to be telling me that if the sequence is stored in a smartphone internal memory, then I can claim to have invented a new form of smartphone, but if it is stored on the external microSD card then I have invented a new form of flash memory.”

    Yes, that’s correct and relies on a very old principal of patent claiming that has existed for over 100 years, i.e., if you improve a part of a device you can claim the improved device that includes the improved part. A classic example of a patent including such claims is Edison incandescent light bulb patent (U.S. Patent No. 223,898):

    http://www.freepatentsonline.com/0223898.pdf

    1. An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as descried, and secured to metallic wires, as set forth.

    2. The combination of carbon filaments with a receiver made entirely of glass and conductors passing through the glass, and from which receiver the air is exhausted for the purposes set forth.

    Edison did not invent the incandescent light bulb:

    https://en.wikipedia.org/wiki/Incandescent_light_bulb

  32. Anon October 31, 2017 11:13 am

    Typical Benny, too quick to judge what was said and miss the meaning of what was said.

    Look closer at my reply. No one is saying that you cannot “have an opinion.” What is being said is that your opinion can’t change reality, and that YOUR philosophy (that which is driving your opinion) is simply not in accord with what software is.

    I then – with particularity – point out your error, and you persist in that error without responding to the heart of my message to you.

    It is NOT merely “my opinion” that I reply with. Do NOT attempt to equate what you are supplying with what I am supplying and stop at thinking that they are equal along the lines of “well, everyone has a right to their opinion.” That is a fallacy that I do not brook.

    That you now want to turn around and accuse me of focusing “on a word,” is disingenuous at best, and I am FURTHER calling you out for such a shoddy reply.

    Time for you to face reality.
    Time for you to stop peddling fallacies dressed up as “opinions,” and then thinking that your “opinion” is equally valid as anyone else’s “opinion.”

  33. Night Writer November 1, 2017 9:48 am

    @26 Benny: ” An innovative sequence could be devised to make the machine sing or dance, and the innovation would lie in the sequence and not in the pre-existing state machine. If I were to devise such a sequence, and you were to draft a claim to protect it, how would you go about the task? ”

    Benny, first I have advanced degrees in engineering. Second, your question is ridiculous. We already do claim those sequences. We claim that at a higher level at which the engineers/scienctist/inventors work. And, the whole point of computers and engineering is levels of abstraction. My first year at engineering school that was one of the first lectures I remember. Levels of abstraction in engineering.

    So, I would say to you to look at any claim to information processing and it is claiming those sequences of bits at a higher level of abstraction. (And your silly game can be played with mechanical devices too. E.g., am I sitting on my chair or static equations? Gee, are you claiming each molecule of gas that flows through a car? Etc.

    And, you are also playing the game that doesn’t deal with Turing.

    Nor did you answer my question about a special purpose computer to perform a function, e.g., your singing. The singing could be done by a circuit without any of your stream of bits.

    You have the characteristics of a troll. You are spouting the same type of misinformation that has been paid for by Google to be generated by K street.

  34. Night Writer November 1, 2017 9:49 am

    Probably not going to respond to you anymore Benny. You are obviously at minimum a propagandist. And, Benny, I’ll bet that if we both took the advanced test in CS and EE right now that I would score much, much higher than you.

  35. AlexO November 4, 2017 11:32 am

    I would be interested to get Benny’s opinion on Bitcoin: did Satoshi create a process or manufacture? Of course, I’m talking about those intangible crypto-hashes themselves, not the process of mining them.

    Thanks,
    -Alex

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