As 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.
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.