Will SCOTUS take Vehicle Intelligence petition, which calls Alice ‘universal pesticide to kill’ patents?

By Audrey Ogurchak
May 27, 2016

SCOTUS-supreme-court-w-flag-335As the patent world attempts to sort out the implication of the Federal Circuit’s recent ruling in Enfish v. Microsoft Corp., the Supreme Court will soon decide whether to take on the challenge of further defining the standard for abstract idea eligibility in a petition for certiorari, which challenges the Federal Circuit decision in Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA. The patent at issue in Vehicle Intelligence, U.S. Patent No. 7,394,392, is related to a method and system for screening equipment operators for an impairment, testing those operators, and controlling the equipment if an impairment is detected. Representative claims at issue include claim 8, to a method of screening an equipment operator for impairment, and claim 16, which covers a system to screen an equipment operator. These claims are provided below.

Claim 8 – A method to screen an equipment operator for impairment, comprising

screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;

selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.

Claim 16 – A system to screen an equipment operator, comprising:

a screening module to screen and selectively test an equipment operator when said screening indicates potential impairment of said equipment operator, wherein said screening module utilizes one or more expert system modules in screening said equipment operator; and

a control module to control operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening module includes one or more expert system modules that utilize at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.

In applying the first part of the Mayo/Alice test, the court specifically took issue with the idea that the claims failed to limit the scope of the invention to any particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the expert system to perform any screening or testing, and explain the nature of control to be exercised on the vehicle in response to the test results. The court specifically took issue with the disclosure of the expert system, finding that, at best, the ‘392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system,” with no explanation no how this “expert system” is used. Vehicle Intelligence, relying on references disclosed in its specification, argued that the existence of prior art methods of equipment operator testing proves that the claims at issue do not preempt the abstract idea of performing equipment operator testing because these references describe non-infringing methods for doing so. The Federal Circuit rejected this argument by stating that the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to a patent-eligible subject matter.

[Supreme-Court]

The Federal Circuit found that Vehicle Intelligence had failed the second part of the Mayo/Alice test, holding that nothing disclosed in the claims at issue was sufficient to transform the abstract idea into a patent-eligible application of that idea. Vehicle Intelligence pointed out four concepts in the claims at issue that it determined to be inventive: 1) screening by one or more expert systems; 2) selectively testing; 3) a time-sharing allocation of at lease one processor; and 4) a screening module that includes one or more expert systems that are at least a portion of one or more equipment modules. The court held that these claims merely state the abstract ideas and do not describe the method for achieving desired results, therefore failing Mayo/Alice step 2.

In March 2016, Vehicle Intelligence filed a petition for writ of certiorari with the Supreme Court arguing that the two-part Alice test is “a universal pesticide to kill and invalidate virtually all patents.” Vehicle Intelligence has posed the following questions: (1) whether the Mayo/Alice test states that use or application of an abstract idea is automatic, conclusive proof of preemption of the abstract idea; (2) whether the Mayo/Alice test requires that any patent which improves on technology existing in the prior art to be retaught in a vacuum in order to present inventive concepts to satisfy the second step of the Mayo/Alice test; and (3) whether a patent would satisfy the second step of the Mayo/Alice test by having independent claims that include multiple explicitly-stated inventive concepts.

In its petition, Vehicle Intelligence references to the four inventive concepts it argued would overcome the second part of the Alice test. Vehicle intelligence claimed that the Federal Circuit “now demands teaching all the invention implementation details, which implicitly requires that a patent and every patent claim must teach the invention in a vacuum. Each patent teaches its invention in view of the already known prior art.” Vehicle Intelligence is arguing that if a claimed invention is an improvement of a technology existing within the prior art, it will overcome the first hurdle of the Mayo/Alice test because the fact that the invention exists within the prior art makes the technology a non-abstract idea.

Vehicle Intelligence also argued that the current application of the Mayo/Alice test can lead a court to “invalidate almost any patent by asserting that the use or application of any idea by any claim element is the same as preemption of the idea by the entire claim, and then just brush-off any number of true inventive concepts in the patent claims as being irrelevant and meritless to satisfying step two of the Supreme Court Alice test.” Here, Vehicle Intelligence is arguing that the Federal Court of Appeals and the district courts are able to state that, when dealing with any improvement of an existing technology, the invention is the same as the referenced invention and can ignore and advancement made to the existing technology.

The Supreme Court is expected to issue its decision on certiorari petitions in early June. As the Federal Circuit decision was non-precedential, it appears, on its face, that the Supreme Court is not likely to take the case. However, Vehicle Intelligence takes the same procedural posture as KSR v. Teleflex, which was also a non-precedential Federal Circuit opinion and lead to a monumental Supreme Court decision on obviousness. However, the deck is likely stacked against Vehicle Intelligence for a variety of reasons, making it likely that the Supreme Court will deny this petition.

 

The Author

Audrey Ogurchak

Audrey Ogurchak is a 3L at Syracuse University College of Law, pursuing a JD/MS in Computer Science. Audrey also received a B.S. in Chemical Engineering from Ohio University. She is currently focused in patent law and technology transactions. Audrey has spent a portion of her legal education assisting start up companies navigate through intellectual property, regulatory and market issues. She is currently the Technology Editor for Syracuse University's Journal of Science and Technology Law and the President of Syracuse's Intellectual Property Law Society.

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 25 Comments comments.

  1. Grammar Nazi May 27, 2016 9:11 am

    Typo: “the deck is likely stacked against Vehicle Intelligence for a variety of reasons, making it unlikely that the Supreme Court will deny this petition.” Should be “likely” SCOTUS will deny or unlikely SCOTUS will “grant”.

  2. Night Writer May 27, 2016 9:46 am

    I think this case may not be the best because it includes a human and there are 3 justices that psychotically believe that innovation is not for controlling human behavior. Even though, almost all the iron age innovations control and change human behavior. But, what they do is map the invention to a portion of their mind (not brain, because they aren’t convinced there is a connection between their mind and brain) and then feel violated that a claim is trying to read on their mind. Bizarre. Right out of the 13th century.

    But, I think this is clearly statutory and that the justices should be ashamed of themselves for their ignorance of technology.

  3. Bob May 27, 2016 9:57 am

    Last sentence: unlikely that the supreme Court will deny this petition?

    Also, it’s so fortunate that expert systems are experts on everything! That was, everything is enabled!

  4. Bemused May 27, 2016 12:15 pm

    I cringe at this statement: ““a universal pesticide to kill and invalidate virtually all patents.” because of the implication that patents are akin to cockroaches (although I’m sure the infringer lobby would disagree).

    Patent rights shouldn’t be linked to pesticides (defined as a substance to kill insects or other harmful organisms). If that statement is indicative of the kind of drafting of the rest of the petition for cert, good luck in getting it granted.

  5. mike May 27, 2016 12:55 pm

    “In applying the first part of the Mayo/Alice test, the court specifically took issue with the idea that the claims failed to limit the scope of the invention to any particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the expert system to perform any screening or testing, and explain the nature of control to be exercised on the vehicle in response to the test results. The court specifically took issue with the disclosure of the expert system, finding that, at best, the ‘392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system,” with no explanation no how this “expert system” is used. ”

    Why is this not an enablement or disclosure issue rather than an abstract idea issue?

  6. JNG May 27, 2016 1:18 pm

    I agree with NW that this is not a good case to change their thinking. It just lends itself too easily to ready dismissal as an old idea just on a new machine, which, in reality should be a prior art issue, but we have to all pretend now that we don’t know about the other parts of the code now that 101 has taken over everything. Mike is also right that the proper challenge probably should have been 112 as well. 101 IS really the generic pesticide but I don’t think the SCOTUS will think this case monumental enough to clarify their thinking.

  7. Night Writer May 27, 2016 1:49 pm

    >>Why is this not an enablement or disclosure issue rather than an abstract idea issue?
    >> Mike is also right that the proper challenge probably should have been 112 as well.

    It is not an enablement issue because, if it were, then they would have to consider evidence of what a person of ordinary skill in the art could or could not do. That would negate Alice whose whole point is to allow invalidity with SJ. I haven’t looked at the court documents, but I wonder if there is any discussion about this from the P that was simply ignored by the judges.

    Interestingly, Taranto has on more than one occasion said that implementing an expert system is obvious and within the skills basically of anyone. (Although he admitted in person that he had no idea how expert systems really work.)

  8. Anon May 27, 2016 2:00 pm

    old idea just on a new machine

    Let’s explore that statement from a few different angels:

    Statutory category of a machine or manufacture (including system): is the capability of this “old idea on a new machine” captured inherently in the pre-existing machine?

    If yes, then the proper patent doctrine is the doctrine of inherency.
    If no, then you have met the explicit words of 101.

    Statutory category of method:
    See 35 USC 100(b) which was explicitly added by Congress to eliminate this type of pernicious judicial muckery.

    Let’s stop dancing around and force feed the Court what the law as written by Congress IS. Let’s make it plain that if the Court is going to write its own version of the law, then that we are going to be well aware that that is what they are doing.

    All of this should be as point blank as possible – to use my previous adage: slam on the gas pedal. Playing coy and “nice” is not helpful. Make it so blatantly obvious what is going on that even Congress will stand up and take notice.

    Citizen’s unite*** and take back the statutory law from the courts.

    ***What? that phrase is taken? Well, maybe that is part of the problem here…

  9. Anon May 27, 2016 2:01 pm

    “angels” should be angles

    The devil made me do it… 😉

  10. Anon May 27, 2016 2:05 pm

    Night Writer @5,

    Doing as you suggest would also force the Court to realize that they themselves have greatly empowered PHOSITA which allows for MORE patents with LESS disclosure.

  11. Night Writer May 27, 2016 2:30 pm

    I wonder what the criminal law equivalent of Alice is.

  12. Bob May 27, 2016 4:53 pm

    Maybe in addition to deleting my apparently forbidden sentiment (that this patent is invalid dreck wrapped in expert-system-magic), you should also correct the typo my previous post pointed out?

    Last sentence:

    “However, the deck is likely stacked against Vehicle Intelligence for a variety of reasons, making it __unlikely__ that the Supreme Court will deny this petition.”

  13. Ternary May 28, 2016 12:32 pm

    We are looking at this the wrong way. Justices already know that they are going to invalidate the claims. And the claims in this case deserve to be invalidated, but on different grounds. But reviewing the spec, assessing the skills of a PHOSITA, blah blah blah. It is a lot of work to create a tight reasoning related to a technology that you really do not understand and basically to reach a result that can be achieved in an easier way.

    And then there is this wonderful gift from above: Alice. You don’t know what an abstract idea is. But you definitely recognize it when you see it. A sprinkle of Alice pixie dust and “poof” the case is resolved.

    Alice in the eyes of the reviewer is not a pesticide, it is pixie dust, Wonderbread, Miracle Gro. It is the gift that keeps on giving. It makes most of your problems go away and fully sanctioned by the highest court in the land. And it is so flexible.

    It now is the step you want to apply in any patent review. And that is what everyone does, very effectively. And the genius is that it is applied to problematic patent claims that would likely be invalidated on other grounds anyway. No real mistake being made, thus.

  14. Anon May 28, 2016 12:54 pm

    Ternary,

    There are several problems with what you say (sorry to be a stickler for the Rule of Law)…

    1) This places patent law writing in the hands of the judicial branch. Our Constitution has a problem with that.

    2) Since undefined and unknowable a priori, this newly written law by the judicial branch suffers from terminal vagueness. The Rule of Law pertaining to Void for Vagueness has a problem with that.

    3) One section of law should not be co-opted for another, merely because of ease. The Rule of Law in a general sense has a problem with that.

    It is said that one should have flexibility and an open mind – but not so much flexibility an openness that one’s brains fall out.

  15. Ternary May 28, 2016 2:30 pm

    Anon: Ha ha. One really should— but alas.

    I had a discussion with an Examiner on a very technological/theoretical issue in a claim that he suddenly realized he was wrong on. The Examiner after a brief pause then apropos of nothing noted that the invention was possibly applicable to a business process and thus perhaps was even an abstract idea.

    Sim sala bim, abracadabra, a bit of Alice pixel dust…. What do you mean constitution? Law? And fully covered. Absolutely brilliant.

  16. Paul Cole May 28, 2016 4:25 pm

    I think that there are several cases going up on petition at the moment, but this is not one of the stronger ones.

    It is difficult to see how the subject matter of claim 8 is sufficiently transformative to fit into the process category for eligibility under Section 101.

    Nor is the petition thorough and well prepared. The questions posed are not well-grounded in law and are unlikely to be attractive to the Justices or their law clerks. Only 4 references other than statute are cited, whereas my amicus brief to the Federal Circuit for en banc rehearing in Sequenom cited some 12 earlier decisions and 25 references in total. The effort and detail needed are further illustrated by the amicus brief of the Chartered Institute of Patent Attorneys in Sequenom, and by many other of the amicus briefs in that case.

  17. Paul F. Morgan May 29, 2016 9:35 am

    I’m assuming the “UNlikely” .. “to deny” in the last line is a typo. Besides the current 100 to one general odds against the grant of cert petitions, how much credibility can be given to hopes that the Sup. Ct. would reverse one of its own recent unanimous decisions, much less via a cert petition with such comments?
    Yes, a 112 enablement rejection seems far more appropriate in cases like this than an abstract abstraction rejection, but only recently has the PTO stopped discouraging examiners from giving such 112 rejections to applications. 112 cannot be raised in an IPR against original claims, and it is very difficult to get serious D.C. consideration of S.J. on that issue.

  18. Ternary May 29, 2016 1:41 pm

    This case is the red flag type of patent that caused the Alice trouble in the first place. There is no reference in the specification on how the expert database and inference engine (decision module?) are configured or operated. There is actually no significant enablement or description of Expert Systems or Expert System Languages in the spec. No decision criteria are provided or illustrated. Perhaps these details are not required for a PHOSITA in Expert Systems, but they would be helpful for a PHOSITA in equipment construction. It is an almost completely “black-box” design that reminds me of the famous 1977 Sidney Harris cartoon with “then a miracle occurs.”

    Many people despise “black box” patents, especially where the black box is a computer. It is very difficult to assess for a non-technologist from these specs what the “technology” content is and it just looks all too simple. That is why an Enfish, with its (fairly abstract) tables described in detail is more acceptable in review than the TLI patent. The description of a computer system requires a certain level of black box abstraction but in certain cases the description is disconnected from any realistic engineering effort and this upsets many people.

    Alice has become so powerful to invalidate “black box” patents (justified or not) that it is highly unlikely that we will get rid of Alice in court any time soon. The rejection and invalidation of truly “technology” patents, including what I would consider ridiculous decisions, are considered ancillary to the bigger goal of cleaning up the system.

  19. Stephan Curry (Klay's Sidekick) May 29, 2016 4:06 pm

    Ternary@15

    it is ironic that the go to patent guy(s) who did work for google is a black-box approach patent drafter and the irony is that the USPTO Director now wants to wipe out the black-box patents as allegedly low quality patents since She got burned.

    anyway, intelligence is in the genes, Klay Thompson is a bad dude since he got that assassin mentality from his NBA-champ dad Mychael Thompson. An assassin will write black box patents as well as more detailed patents for the client’s portfolio and tell the client that these are the Western Conference Game 7.

  20. James Johnson May 30, 2016 12:46 am

    EDITORIAL NOTE: COMMENT DELETED AND JAMES JOHNSON BANNED.

  21. angry dude May 30, 2016 10:00 am

    so sick and tired of all of this

    just find me another planet

  22. Curious May 30, 2016 11:56 pm

    Having just read this thread and reviewed the patent in question, I agree with most that this isn’t a great vehicle to sober SCOTUS up when it comes to 101 jurisprudence. The flow charts (although many) weren’t very detailed.

    However, the one thing that caught my eye was the extensive discussion of the prior art in the background of the invention. To me, a point worth raising is that this “type” of technology has been patented for 40 years (probably over 50 years when you drill down through the citations). One could argue that the level of detail in the specification wasn’t detailed because many of the types of systems referenced by the patent have already been known.

    The Federal Circuit said that this is “the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.” Leaving aside that this isn’t an “abstract idea,” wouldn’t this whole field be caught up within this alleged abstract idea? If so, since almost all mechanical devices use conventional devices in conventional manner (in applying these “abstract ideas”), shouldn’t this whole field be doomed? Unlike 103, which is a species-specific pesticide, the application of 101 is a broad-spectrum pesticide that kills everything (the good along with the bad).

    The Federal Circuit bemoans the lack of specificity as to how certain aspects of the invention work together. However, what they fail to realize is they are asking questions that aren’t relevant to the invention at hand or to those skilled in the art. The disclosed prior art already describes expert systems for detecting impairment — predating this application by 30 years.

    Plaintiff didn’t claim to have invented “expert systems,” but that is what the Federal Circuit (wrongly) focused on. They appear (from reading the claims and the specification) invented using an expert system that is used to screen a user prior to testing the user. This is hardly an “abstract idea.” It requires two types of testing equipment (i.e., the initial screen and the testing unit) that must interact with one another (such that the first triggers the second). Moreover, the second testing unit must be able to interact with the vehicle/equipment.

    Another point worth raising is that the dependent claims go into some of the details that the Federal Circuit bemoaned were lacking from the independent claims. These dependent claims appear to have been appealed (see FN1), yet there is no mention of these dependent claims in the opinion.

  23. Gene Quinn May 31, 2016 10:38 am

    Updated the last sentence to read as intended. That error was mine in editing, not Audrey’s.

  24. Gene Quinn May 31, 2016 10:41 am

    Bob @12-

    You wrote: “Maybe in addition to deleting my apparently forbidden sentiment…”

    Not forbidden sentiment. Your comment was made during a holiday weekend. You apparently have never commented here before so your comments were waiting in moderation for me to approve, which I did this morning.

    Having said that, your first comment really wasn’t very informative and seemed quite smarmy. If you want to contribute here in the commentary please make your comments less mysterious and filled with greater content.

  25. Curious May 31, 2016 3:33 pm

    It appears that the petition was denied … ‘nothing to see here folks … ignore the bodies in the street … move along, move along, move along …’