The Federal Circuit Just ‘Swallowed All of Patent Law’ in ChargePoint v. SemaConnect

By Russell Slifer
April 2, 2019

“Based on the Chargepoint decision, inventors, business leaders and attorneys cannot, or should not, rely on the USPTO’s new 101 guidance. Unfortunately, with this decision, the guidance is now worthless.”

In ChargePoint Inc. v. SemaConnect, Inc., (2018-1739) the Federal Circuit considered the following claim:

  1. An apparatus, comprising:

a control device to turn electric supply on and off to enable and disable charge transfer for electric vehicles;

a transceiver to communicate requests for charge transfer with a remote server and receive communications from the remote server via a data control unit that is connected to the remote server through a wide area network; and

a controller, coupled with the control device and the transceiver, to cause the control device to turn the electric supply on based on communication from the remote server.

https://depositphotos.com/109449130/stock-photo-blue-101-sign.htmlThe Court inexplicably stated in its opinion that “[i]t is clear from the language of claim 1 that the claim involves an abstract idea—namely, the abstract idea of communicating requests to a remote server and receiving communications from that server, i.e., communication over a network.”  The Court further stated, “[w]e therefore continue our analysis to determine whether the focus of claim 1, as a whole, is the abstract idea. As explained below, we conclude that it is.”

In reaching this conclusion, the panel rationalized that “the broad claim language would cover any mechanism for implementing network communication on a charging station, thus preempting the entire industry’s ability to use networked charging stations. This confirms that claim 1 is indeed “directed to” the abstract idea of communication over a network to interact with network-attached devices.”

A Perplexing Analysis

As an electrical engineer and patent attorney, I am truly perplexed by this statement. Claim 1 recites numerous physical electrical components, a control device (on/off switch), transceiver to communicate with a remote server and a controller to activate the on/off switch based on communications from the server. The configuration of the components may be anticipated or obvious under the patent statute based on prior art, but they are anything but abstract and do not preempt all ways of charging a vehicle using a network. Congress specifically stated in 35 U.S.C. 101 that there are four statutory categories of patentable subject matter: process, machine, manufacture, or composition of matter. If claim 1 is not a machine, I don’t know what is.

The Court even went so far as to cite O’Reilly v. Morse, 56 U.S. 62 (1853), stating that “[i]n Morse, the [Supreme] Court upheld claims related to the details of Samuel Morse’s invention of the electromagnetic telegraph but invalidated a claim for the use of ‘electromagnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.’” The claims considered by the Court in Chargepoint, however, do not claim network communication, however developed for charging a vehicle. They claim machines with specific technological limitations. Based on the Court’s reasoning, all Internet of Things (IoT) inventions are merely claiming the “abstract” idea of network communications.

The Court’s conclusion is entirely incorrect and in effect overrules the new USPTO guidance just 80 days after its effective date of January 7, 2019.

Don’t Rely on the USPTO Guidance

Director Iancu’s new patent eligibility guidance was overwhelmingly viewed as needed to provide some predictability to the U.S. patent system. The guidance, however, is just that— guidance for the USPTO examiners and judges to follow. The guidance has no precedential authority to either district courts or the Federal Circuit.

In announcing the new guidance, the USPTO stated that, “in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.”

The new guidance included a two-prong inquiry for whether a claim is directed to a judicial exception. First, examiners evaluate whether the claim recites a judicial exception and, if so, examiners then evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is directed to a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test would be required.

Based on the Chargepoint decision, inventors, business leaders and attorneys cannot, or should not, rely on the USPTO’s guidance. Unfortunately, with this decision, the guidance is now worthless. A patent may issue based on the guidance, but it is already out of line with the Court and has no certainty of being valid under 101.

The claims at issue in Chargepoint clearly do not recite a mathematical concept, certain methods of organizing human activity, and mental processes. As such, they are eligible under the new guidance. Even if the claims somehow fall into a judicial exception, the second prong would determine that the claim “integrates a judicial exception into a practical application.” According to the USPTO “[w]hen the exception is so integrated, then the claim is not directed to a judicial exception and is eligible.” There is no question that a vehicle charging station is a practical application. If there is any question, simply look at claim 31 considered by the Court:

     31. A network-controlled charge transfer system for electric vehicles comprising:

a server;

a data control unit connected to a wide area network for access to said server; and

a charge transfer device, remote from said server and said data control unit, comprising:

an electrical receptacle configured to receive an electrical connector for recharging an electric vehicle; an electric power line connecting said receptacle to a local power grid;

a control device on said electric power line, for switching said receptacle on and off; a current measuring device on said electric power line, for measuring current flowing through said receptacle;

a controller configured to operate said control device and to monitor the output from said current measuring device;

a local area network transceiver connected to said controller, said local area network transceiver being configured to connect said controller to said data control unit; and

a communication device connected to said controller, said communication device being configured to connect said controller to a mobile wireless communication device, for communication between the operator of said electric vehicle and said controller.

The Court ignored all of the claim elements that demonstrated a practical application, instead stating that:

“[i]n essence, the alleged ‘inventive concept’ that solves problems identified in the field is that the charging stations are network-controlled. But network control is the abstract idea itself, and “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’ than that ineligible concept.”

The Alice Warning

The Chargepoint Court concluded that:

“[i]n short, we agree with SemaConnect that the only possible inventive concept in the eight asserted claims is the abstract idea itself. ChargePoint, of course, disagrees with this characterization, arguing that its patents claim ‘charging stations enabled to use networks, not the network connectivity itself.’ But the specification gives no indication that the patented invention involved how to add network connectivity to these charging stations in an unconventional way. From the claims and the specification, it is clear that network communication is the only possible inventive concept. Because this is the abstract idea itself, this cannot supply the inventive concept at step two. The claims are therefore ineligible.”

The Supreme Court warned in Alice to “tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, ‘all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.”

I am afraid the Federal Circuit just swallowed all of patent law by ignoring the other sections of the patent statute and exclusively relying on 101.

Image Source: Deposit Photos
Photo by timurlaykov
ID: 109449130 

The Author

Russell Slifer

Russell Slifer is a Principal at Schwegman Lundberg & Woessner and the former Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director of the United States Patent and Trademark Office. For more information or to contact Mr. Slifer, please visit his firm bio page.

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 53 Comments comments. Join the discussion.

  1. Jeff Lindsay April 2, 2019 5:35 pm

    Such a painful setback. Truly outrageous and dangerous.

  2. Anon April 2, 2019 6:20 pm

    While not listed as precedential (nonetheless at the CAFC), there is a more direct recent case that explicitly set aside an example written by the USPTO (Example 29) as one that would be considered patent eligible – but now, expressly not so by the Common Law law written by the judicial branch: See http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1218.Opinion.4-1-2019.pdf

  3. Kevin R. April 2, 2019 6:49 pm

    Thinking about the case over the weekend I could not escape the conclusion that the 2019 PEG might have died. The small sliver of hope may be if the USPTO can quickly release a set of examples with one or more ChargePoint claims involved. I think most practitioners will separate their PEG arguments and request the Examiner evaluate under Berkheimer. Also, I think most patent stakeholders would prefer any future CAFC/SCOTUS opinion to be based on a claim that looks more like 31 (above) than claim 1 (top)…

  4. Pro Say April 2, 2019 7:11 pm

    Thanks Russ. Had the same thoughts.

    102-barred? Perhaps.

    103-barred? Perhaps.

    But 101-barred? No way.

    Not only didn’t this panel tread lightly, they forcefully stomped the life out of a very important and valuable innovation.

    But what the heck; at least China and the Europeans can now swoop in and steal, use, and profit big time with this technology . . . for free.

    Welcome to America! Come one! Come all!

    Valuable innovations in a wide range of technologies . . . free for the taking!

  5. Bemused April 2, 2019 8:11 pm

    Decision authored by Prost, Reyna (“what’s the difference between a page server and a web page”) and Taranto. Also commonly referred to as “Dumb and Dumber and Dumbest”

  6. Daniel Hanson April 2, 2019 8:55 pm

    It used to be black letter law that apparatus claims cover what a device IS, not what a device DOES. But in some section 101 analyses, this basic principle of law seems to be placed on hold; and there seems to be free inquiry into what an apparatus does rather than what it is, by inquiring what the apparatus is “directed to.”

  7. David Stein April 2, 2019 9:36 pm

    The article does not really present the Federal Circuit’s reasoning.

    The good news is that the Federal Circuit (a) acknowledged the difference between merely *finding* an abstract idea in the claims and determining what the claims are *directed to* (noting TLI Comms. – and, implicitly, Diamond v. Diehr), and then (b) pinned its findings on the “directed to” part of the inquiry.

    This analytic distinction matters *a lot*. Thousands of awful 101 rejections occurred because the examiner glanced at the claims, saw “data processing,” identified it as an abstract idea, and just stopped reading right there. So it’s good that the Federal Circuit focused closely on that aspect – in accordance with the Guidance!

    The Federal Circuit looked at the specification to find “the problem facing the inventor” in order to identify the “directed-to” point of the claims. Here’s what it found:

    “The problem identified by the patentee, as stated in the specification, was the lack of a communication network that would allow drivers, businesses, and utility companies to interact efficiently with the charging stations. For example, the specification states that ‘[t]here is a need for a communication network which facilitates finding the recharging facility, controlling the facility, and paying for the electricity consumed.’ … The specification makes clear — by what it states and what it does not — that the invention of the ‘715 patent is the idea of network-controlled charging stations.”

    Okay, so the point of novelty is somewhere in the server / client / network / data exchange / data set. Let’s look at those portions of claim 1:

    * There’s a server.

    * The charger has a transceiver that communicates with the server.

    * The charger controller receives on/off signals from the server through the transceiver and switches the charging port on or off based on the signals.

    * The End.

    Claim 31 is actually *worse*:

    * There’s a server.

    * The charger has a data control unit that talks to the server.

    * The charger has a WiFi transceiver that connects the charging controller to the data control unit, and a cellular transceiver that connects the controller to the user’s mobile device.

    * The End.

    In claim 31, the server and network *literally don’t do anything*. They merely exist and are connected. (The controller *collects* data, but claim 31 doesn’t state that it goes anywhere – not to the server, not to the user.)

    The best vehicle (ha) to invalidate claim 1 is 102/103. The best option to invalidate claim 31 is 112(b): the unidentified functionality of the networking stuff creates ambiguity.

    Instead, the Federal Circuit decision tripped over 101 again. And it did so in the same maddening, irreconcilable, begging-the-question manner of the Intellectual Ventures cases: characterize the claim as “basically” a simple principle in some field. Even if that field is technical. Even if the specification explains the *technical problem in that field*. Just go ahead, ignore the claim language and flush the case away.

    tl;dr: 101 is a bad tool for this matter when other tools, those that are more specific and well-articulated and reliable, are applicable for largely the same reasons.

    stl;sdr: David Kappos is right again.

  8. concerned April 2, 2019 9:49 pm

    “The guidance, however, is just that— guidance for the USPTO examiners and judges to follow. The guidance has no precedential authority to either district courts or the Federal Circuit.”

    S101 from Congress was just guidance also. Just feel free to add any unexpressed judicial exception. The law has no apparent precedential authority either.

    Dangerous. Read Anon’s supplied ruling. After the court’s praising of the USPTO expertise, I could hear a big “but” coming from miles away. I was hoping that the courts would welcome the PEG as a “saving face” situation to make rulings more consistent. It is odd that everything is declared abstract, yet no court will define such a term that does not exist in law.

    Personally, I liked the practical application approach. Let the marketplace determine which new, non-obvious, not preemptive idea wins the day for a limited time frame, not judges. The 2 court battles discussed in the comments section must be a practical application of something to fight so fiercely for its usage, hence, the processes have marketplace value.

    What is so wrong about giving the patent to the first to file? It is no easy task to think something up that is novel, non-obvious and not preemptive that has big marketplace value.

    Not an attorney, just a lucky (or unlucky) inventor who discovered something that is considered the “Holy Grail” of my profession. This patent stuff seems bizarre.

  9. Ternary April 2, 2019 10:51 pm

    This is what the much cited O’Reilly v. Morse actually says about patentability:

    “Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.”

    In the context of O’Reilly v. Morse the claims of this case would be patent eligible if the specification further teaches the specific components. Which this case does: Zigbee protocol, Bluetooth, Wi-Fi, WLAN, PLC, the Internet, etc. Thus, claiming these specific network components would make the claim patent eligible, because it is no longer directed to “the abstract idea of communication over a network to interact with network-attached devices” but to a very specific technical infrastructure.

    Unfortunately, the Courts now diverge from O’Reilly v. Morse by holding that detailing the technical computer components is meaningless, useless and futile. Because they will invalidate the patent anyway, if they feel like it. We are stuck in a period of utter irrationality in patent law. Courts make edicts that are in direct contradiction with engineering concepts. “The abstract idea of communication over a network to interact with network-attached devices” is such utter engineering nonsense and idiocy that I can hardly type the words.

  10. Paul Morinville April 3, 2019 12:55 am

    It seems to me that the decision on 101 is reserved exclusively for the USPTO because the only allowed challenges are 102. 103 and 112 in Section 282. Specifically excluded is 101.

    I know the courts have allowed challenges under 101, but they dont have the right to do that under statute.

    So now the USPTO (with the exclusive right to determine 101) has different guidance than the court but the court not only takes the case outside of law, but will not follow the USPTO guidance.

    Am I wrong about 282? Did I miss something?

  11. Benny April 3, 2019 5:36 am

    I would have expected the USPTO to reject the application on obviousness grounds, (103), citing, say, US6507273.
    Pro Say at 4 , I don’t see this as “stomping the life out valuable innovation” because (a) I don’t think this was innovative in 2008, and (b) the disclosure is out there in the real world, alive and kicking. Innovation doesn’t “die” when the USPTO rejects a patent application. Monetization, maybe, but you can’t “kill” knowledge.

  12. M April 3, 2019 5:51 am

    I don’t agree with the reasoning for the 101 rejection of claim 1, but I agree with 101 rejection of claim 31, the limitation “a controller configured to operate said control device and to monitor the output from said current measuring device;” is abstract based on the abstract idea of “monitor the output”, where the result/product of “monitor the output” is not further limited. Furthermore, claim 31, doesn’t really do anything.

  13. Night Writer April 3, 2019 6:47 am

    The panel says it all. Reyna: No patent law. No science. Selected by Obama in accordance with SV directives. Taranto: No science. Extremely anti-patent before appointment. Selected by Obama in accordance with SV directives. Prost: a f’ing joke. She did a little work on Congressional Committees and got a plumb reward of a judgeship that seemed at the time odd. One wondered who she knew or what she did to get the appointment.

    So a panel that has no credibility.

    “It is clear from the language of claim 1 that the claim involves an abstract idea—namely, the abstract idea of communicating requests to a remote server and receiving communications from that server, i.e., communication over a network.” This says it all. No Berkenheimer. Just a simple “it is clear.” It is clear that Renya and Taranto promised to burn the patent system down in exchange for their appointments. It is clear that Prost slept her way to get the appointment. It is clear. No proof needed. To a certainty these things are clear. Because it is clear.

    We need to disband the CAFC. Obama stacked the court with judges that promised to burn the patent system down in exchange for their appointments and Obama let SV select the judges.

  14. Kelly Mackin April 3, 2019 7:20 am

    The issue, as was stated above, is Federal Circuit hostility to broad patents. In my firm’s recent case, the panel specifically stated, “this is a very tight patent, i mean the claim language is very tight. With this patent, you could own half the internet.”

    It matters not to these activist judges that you truly invented something that no one saw before. In our case, 46 other patents mentioned us as prior art (§112).
    It did not matter that all other players copied our approach.

    These black robed economists fervently believe that broad inventions hurt the economy. In fact, broad inventions have a disruptive effect by helping to create the next economy.

    To kill the patents, they contorted themselves using “directed to,” as we see here. My patents were about a system that intelligently captured, stored, and tranformed configuration settings so the “settings would work across platform.”

    These are corrupt decisions, because they have to twist patent law beyond recognition in order to meet a policy goal. The meritocratic process that rewards inventive thought is under assault like we have never seen. The minds that need to be empowered with capital to bring forth new industries can no longer look to the Federal Courts.

  15. Paul Cole April 3, 2019 7:32 am

    Readers of this and other blogs will be well aware that I am no supporter of over-broad application of Section 101 and disregard of the “all elements” rule when interpreting claims.

    In relation to the first representative claim quoted, it is not apparent that the claimed combination of features could conceivably give rise to any new and unexpected result such as would justify grant of a patent. Webster Loom v Higgins establishes that new result from known elements is evidence of invention. The philosophical question arises whether absence of evidence can be equated with evidence of absence. Arguably where evidence should be available and should be actively sought, it is arguable that absence of surprising new result is indicative of absence of invention. On that basis, the intrinsic merit of the claimed subject-matter is highly doubtful

    The description of the corresponding patent is devoid of significant detail and the patent drawings are simplistic to the point of childishness. The absence of invention is, unfortunately, apparent on the face of the specification itself. Sadly, I see little room for arguing that the opinion of the panel here is incorrect or inappropriate.

    Also, there appears to be no filings outside the US, so that we do not know how the EPO would have treated a corresponding application. Most likely, there would have been a holding of lack of inventive step firstly because there was no invention in identifying the technical problem and secondly because there was no invention in identifying a solution.

    Ternary rightly points to O’Reilly v Morse. However, I doubt whether there was sufficient disclosed technical infrastructure to bring the case into patent eligibility.

  16. The Truth April 3, 2019 7:32 am

    “Unfortunately, with this decision, the guidance is now worthless. A patent may issue based on the guidance, but it is already out of line with the Court and has no certainty of being valid under 101.”

    The guidance was worthless to begin with. There was no basis in law for Iancu’s “guidance”. The federal registry notice basically said as much when it discussed how the numerous federal court decisions were too complicated for them to follow, so Iancu decided to make up his own test that completely diverges from the case law.

  17. BP April 3, 2019 9:09 am

    Former Maryland Senior Judge Marvin J. Garbis, who has an Engineering Science degree, ordered expedited briefing on defendant’s Rule 12(b)(6) motion on 101 because he wanted this patent case off his docket and out of the District Court. His order is dated March 23, 2018, he retired on July 10, 2018.

    At the time of his order, Judge Garbis had has his hands full in Stone v. Trump, filed August 28, 2017 (currently under Judge George Levi Russell, III), where he wrote: “A capricious, arbitrary, and unqualified tweet of new policy does not trump the methodical and systematic review by military stakeholders qualified to understand the ramifications of policy changes.”

    Too bad Judge Garbis and his colleagues at the Federal Circuit did not provide the same deference to patent stakeholders and agency policy.

    Listen to the oral argument and you will hear either three Luddites that have difficulty understanding technology or, alternatively, three federal employees protecting the ability of their former fellow federal employee, Judge Garbis, to manage his docket in view of his pending retirement and, ultimately, to get this patent case out of the District Court entirely.

    Proust starts off in the oral argument saying the claims are about “sending and receiving communications over a server”. The matter was decided before oral argument. Defendant made sure to dig in, merely “collecting information”.

    The opinion injects “[b]usinesses such as restaurants, apartments, and shopping centers”. The opinion tries to make the technology a business method. The opinion then divines Electric Power Group, with discussion of utility companies and the power grid.

    Maybe the plaintiff picked the wrong court to bring its infringement action and it certainly drew the wrong panel at the Fed Cir. Damage done.

  18. BP April 3, 2019 9:37 am

    This Maryland case was dismissed with prejudice on a 12(b)(6) motion, which is exactly the tool that judges and efficient infringers wanted. And, let’s not forget politics/PR, from the founder of Maryland based SemaConnect (Maryland Reporter):

    The benefits to Marylanders will be far reaching. . . . Maryland is also party to the Zero Emissions Vehicle (ZEV) taskforce . . . Maryland has committed to putting 60,000 vehicles on the road by 2020 and 300,000 by 2025 . . . transportation electrification will drive investments in a new and emerging industry in Maryland, creating 21st-century jobs and boosting the state’s economy.

    I know this from first-hand experience: 10 years ago, when mass market EVs were still just a dream, I founded SemaConnect with an initial focus on designing a charging solution to meet the coming demand. We deployed our first charging station in 2011 as the first EVs were hitting dealer showrooms.

  19. Anon April 3, 2019 10:31 am

    Mr. Cole,

    Your post here falls far short of merit in and of itself.

    You do a disservice by equating a sum total lack of novelty or “advance” and the notion of “nothing inventive” that severely clashes with your other known position of “affirmatively within a statutory category.”

    As I have noted here and elsewhere, this type of conflation is a pandora’s box, and reflects the very problem that the Court opening that lid has already created.

    The takeaway then is that your comment is part of the problem.

    102, 103, and even 112 problems are NOT to be conflated with eligiblity.

  20. Russ slifer April 3, 2019 10:33 am

    Paul,

    I never say the claimed invention is patentable under 112,102 or 103. But using 101 to say the claims are abstract is just wrong. I don’t care what the inventor’s stated problem was in the spec. Almost all inventors have a broad objective.

    Judicial efficiency is no reason to destroy patent law. Remand the case for proper determination of validity. Based on this case, all IOT patents are suspect. After all, the inventors merely want to connect known devices to the web (thermostat, camera, door locks etc).

  21. Ternary April 3, 2019 10:38 am

    The invention is a typical Smart Grid invention. Smart Grid is an effort to modernize power distribution and utility infrastructure.

    Smart Grid is very well known to PHOSITAs. So, there is no reason to get too much into detail about the underlying technical infrastructure, as it is well known. The specification does a good job in referring to the necessary components. Rather than being childish (what do you want? Circuit schematics?) it meets the minimum requirements of enabling one of ordinary skill. I am not sure that the claimed invention is not non-obvious. But that is of course a different issue all together.

    We have been for a while now in an “ecclesiastical” type of Courts, forcing reality into a prejudiced, unscientific and outdated view of the world, more ideological than technological. One, wherein unwanted concepts have been giving a meaning that is the opposite from what it actually is. The Courts’ arguments have reached a level of strangeness that is hilarious and scary at the same time. If this passes for rational assessment of technology, we are in deep trouble. Director Iancu is facing a bad situation that is getting worse.

    Congress has to step in, sooner rather than later.

  22. Anon April 3, 2019 10:43 am

    To “The Truth,”

    Your version here is simply not accurate.

    Yes, there are critical problems with the Office guidance – just not the ones that you want to spin.

    Instead of “making things up,” the Director correctly identified that the Common Law law writing has yielded a Gordian Knot of contradictions.

    The error was NOT (necessarily) in trying to create off-ramps around the contradictions, as much as it was attempting to incorporate all of the cases WITH the contradictions.

    I do agree with you up to the point that THIS is not a function of the executive branch, but the problem runs FAR deeper in that writing patent law (by the method of Common Law law writing) is NOT a proper function of either the Executive branch or the Judicial branch.

    The Supreme Court erred — and erred greviously when it opened Pandora’s box with its “gift” of the “Gist/Abstract” rewrite of 35 USC 101.

    All that followed — the “pings” and the “pongs” of the back and forth court decisions have only added more and more string to the Gordian Knot.

    The answer to that Gordian Knot is to apply the Kavanaugh Scissors (the combined shears of Schein and oral arguments from California Franchise Tax Board v Hyatt).

  23. Uncle Sam April 3, 2019 11:13 am

    USPTO new fixes are not worthless, its going to take some time to repair the damage Silicon Valley did to kill off patent rights. The USPTO is one branch that needed to be reformed. The damage has been done and its close to impossible to get a patent today or get paid for your patent. Next, we will need government to clean out all the anti patent bills that have been passed like ebay, Alice, Mayo, TC Hearland, AIA Act-PTAB just to name a few. China is coming!! Companies like Google, Apple and Amazon do not care about America, they will do just fine even if America is destroyed. America needs to look after America and the new inventors and the patent system that has made them the super power and the envy of the world. FB, Google, Apple are not American they are global corporations that horde more money then they need and are now killing off the patent rules that have helped make them the profitable companies they are today. We need to fix patent rights to work for everyone and companies like Apple, Amazon, Google need to broken down just like they did to Standard Oil in 1911. If they do not fix patents Huawei, Lenovo and Baidu will control and run the Fourth Industrial Revolution.

  24. Kelly Mackin April 3, 2019 12:14 pm

    could not agree more with the position that global corporations are effectively foreign agents.

  25. Rational Observer April 3, 2019 12:34 pm

    Maybe the judges wanted to move the law in a direction so indefensible that Congress would have to fix 101. If so — success!

  26. BP April 3, 2019 12:35 pm

    @18 “Judicial efficiency is no reason to destroy patent law. Remand the case for proper determination of validity.” Would like to agree, however, as you see, the panel said “no” – they would not vacate the order.

    The SV de facto government aligned its interests with those of federal judges. Judicial efficiency and efficient infringement go hand in hand under the US Constitution’s “promote the progress of science and useful arts” by making sure patents are not obstacles or otherwise obstacles easily removed.

    From a systems theory perspective, the rapidly approaching stable steady-state is no patent system, which assures everlasting judicial efficiency and efficient theft of IP.

  27. anony April 3, 2019 12:45 pm

    The Federal Circuit has shamed itself with this opinion. The Federal Circuit states twice that the claims are directed to “communication over a network to interact with a device” Slip Op. at 11 and 12. Later, in the Alice/May Step 2 (USPTO Step 2B) analysis the court changes its mind on the abstract idea. At page 23, the court states that “network control” is the abstract idea itself (and so is not significantly more). At pages 23-24, the court states that “operat[ing] charging stations remotely … mirrors the abstract idea itself and thus cannot supply an inventive concept.” Which abstract idea is the claim directed to: (1) network communication, (2) network control, or (3) operating charging stations? What authority is there to prove that these three distinctly different concepts are one and the same beyond the conclusory statements in the opinion? Does any form of “network communication” render a claim ineligible?

    From Berkheimer “The second step of the Alice test is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S.Ct. at 2359).” Repeat that: THE TEST IS SATISFIED …. It seems clear from the Chargepoint opinion that network communication with and operation of changing stations was not well-understood, routine, and conventional and that the claims, therefore, should be patent eligible. However, instead of writing a one paragraph Alice Step 2 analysis that makes sense in plain English in accordance with established precedent, the three judge panel in Chargepoint decided to write a 5 page essay (pp. 21-25) that contradicts its earlier statements about the abstract idea in addition to a 15 page essay (pp. 7-21) to justify its nonsensical conclusion under Alice Step 1.

    Since the Chargepoint did not address the “practical application” prong of the USPTO guidance and sidestepped the Berkheimer analysis, those arguments may still be effective with reasonable examiners and PTAB judges. Plus, Iancu will likely continue to push back against the excessive use of 101 for rejections. However, beware of the Federal Circuit. No patent is safe in front of them, regardless of the claims, facts, case law, and precedent, as they still seem to be biased against patentees and appear content with using the 101 hammer as often as possible.

  28. TF April 3, 2019 1:36 pm

    Doesnt this also swallow 101 pre 2019PEG. I mean, really. The focus of this article is the apparently resulting invalidity of 2019PEG, but isn’t the bigger issue that this case seems inconsistent with 101 in general. Perhaps I need to read the article again, and more closely, before concluding that this is a sensationalized attack on 2019PEG, with a misdirected and misleading focus.

  29. B April 3, 2019 2:15 pm

    Before PROST, Chief Judge, REYNA and TARANTO, Circuit Judges.

    Patent owner had ZERO chance just on the panel.

    Whether a claim “supplies an inventive concept that renders a claim `significantly more’ than an abstract idea to which it is directed is a question of law” that may include underlying factual determinations.>

    I’m pretty sure that the requirement of an “inventive concept” is nowhere in s101. I’m also sure there claims don’t preempt “communicating requests to a remote server and receiving communications from that server.”

    Unfortunately, this is just the latest atrocity spewed by horribly incompetent judges. There’s nothing special here.

  30. Night Writer April 3, 2019 2:36 pm

    @25 B

    Could not agree more and “inventive concept” is just the redux of flash of genius.

  31. B April 3, 2019 4:15 pm

    @ rational observer

    Maybe the judges wanted to move the law in a direction so indefensible that Congress would have to fix 101. If so — success!

    So judges decided to usurp legislative authority and break the law so congress would need to fix what the judges broke?

    That’s a fascinating theory

  32. Kelly Mackin April 3, 2019 6:43 pm

    l@judge Thomas did not say “significantly more,” he said “something more.” They are not evwn following tge supreme court Alice decision.

  33. B April 3, 2019 8:14 pm

    Could not agree more and “inventive concept” is just the redux of flash of genius

    As if judges, a group of the most technically-ignorant people on Earth, are qualified to to know whet is and is not “inventive” of “genius.”

    No lawyer who makes a living outside a black robe honestly believes that CAFC knows what it is doing

  34. Curious April 3, 2019 10:45 pm

    I’m a little late to the game here, and many of the good observations have already been taken. However, I have to say that of all the terrible Federal Circuit decision on 101 the last few years, this definitely has to be one of the worst.

    First off, even a marginal examiner should have been able to cobble together a decent 103 rejection on this. That being said, NOTHING about this invention is an abstract idea.

    This confirms that claim 1 is indeed “directed to” the abstract idea of communication over a network to interact with network-attached devices
    That isn’t an abstract idea … that is just a general description of two computers connected over a network. That is TECHNOLOGY — not an abstract idea.

    In short, while the eight claims on appeal vary in some respects, they are all directed to the abstract idea of communicating over a network for device interaction. Communication over a network for that purpose has been and continues to be a “building block of the modern economy.” See Alice, 573 U.S. at 220 (characterizing the use of a clearing house in Bilski as “a building block of the modern economy”). As with the practice of intermediated settlement in Bilski, this “is an `abstract idea’ beyond the scope of § 101,” id., and the asserted claims are directed to that abstract idea.
    I’m sorry, but whoever wrote that is an idiot — plain and simple. Motorized vehicles are also a “building block of the modern economy.” Are improvements related to these abstract ideas? I can think of dozens of different technologies that can be swept away with the same (il)logic.

    I’m beginning to think that the ONLY reliable definition for what constitutes an “abstract idea” is the following: “an invention that the judge doesn’t think should be patentable.” I can find no other common denominator.

    Also, this decision represents two middle fingers to both Berkheimer and Aatrix, as well as Rule 12(b)(6) jurisprudence. If ChargePOINT is going to look for a silver lining, at least they didn’t get Rule 36’d. This is the type of fact pattern — particularly as to the continued misapplication of Rule 12(b)(6) that could get some traction at the Supreme Court. I know, it is a LONG SHOT, but I think it is worth a shot.

    Finally, as to the byline of this article (i.e., “inventors, business leaders and attorneys cannot, or should not, rely on the USPTO’s new 101 guidance”), I have already made this point several times before. Unless and until the 35 USC 101 mess gets fixed at the Courts, it really doesn’t matter what the USPTO decides to issue. Any supposed fixes in Congress that do not address this continued misapplication of 35 USC 101 are little more than band-aids.

  35. B April 3, 2019 10:51 pm

    @Kelly “l@judge Thomas did not say “significantly more,” he said “something more.” They are not evwn following tge supreme court Alice decision.”

    Actually the SCOTUS says both. The SCOTUS also uses “well understood” in Mayo and “well known” in Alice.

  36. Zaphod April 4, 2019 12:33 am

    Don’t Panic! Yet. This CAFC decision actually had nothing to do with the Alice guidance or the new 101 guidance; their decision came straight from the Morse 1853 case. Just like Morse’s claims were found to be too broad (effectively covering all electromagnetic telegraphy using any apparatus for any purpose), the judges here said these claims were too broad (effectively covering any remote control of an electric vehicle charging station). These claims didn’t recite any specific structure for the networking or any specific use achieved by the networking, so the claim covered all possible networked charging stations, and the judges thought that was incommensurate with their disclosure, just like Morse’s claims were too broad. The judges shoehorned this into 101 by saying that ChargePoint can’t have a patent on the “idea” of networking a charging station, but what they really meant was just that the claims were too broad.

    The good news is that this decision doesn’t say anything about how the CAFC will deal with most of the claims that have been getting Alice rejections for the last few years, the kind of rejections that the new guidance was designed to reduce. We can still hope that the CAFC will (overtly or subtly) start finding claims that are integrated into practical applications eligible, so that they gradually make their jurisprudence match the patents coming out of the PTO now.

  37. CJE April 4, 2019 9:21 am

    Indeed. There was no bona fide reason to bring abstractness into the analysis; its obviously political patent law. The functional language in claim 1 appears way overboard on its breadth, and at the same time one can’t help but sense that the same structure is likely found in the prior art, acting on a device other than an “electric car”. One example might be the use of a cell phone to cause a lamp to turn on. Hence no need to mention alleged abstractness. The court equating wide breadth with abstractness shows lack of respect for well established meanings of some simple words. Next, I expect dashed lines in design patents will be interpreted as representing an abstract environment, thereby rendering all design patents having dashed lines, invalid under sec. 101. Have Apple or Samsung’s lawyers thought of that one yet ? Just wait and see, I betcha

  38. Night Writer April 4, 2019 9:44 am

    >>Actually the SCOTUS says both. The SCOTUS also uses “well understood” in Mayo and “well known” in Alice.

    Both are nonsensical. There is no relationship between how well something is known to whether it is abstract or not. The abstract exception was meant to cover cases that are now covered by 112. Abstract was meant to cover cases with claims like improve the speed of the machine and reduce the number of parts. That is what was meant by abstract. The SCOTUS just attached a new meaning to the term abstract.

    Plus, digging is was well known. But building a machine that dugs was not well known when they were first built. So even with well known the SCOTUS is playing games. The question should be is building a machine that performs the well known part well known?

    When I was in law school I read a pile of cases from the UK and the USA and I am sure there was one that explained what abstract meant that agrees with what I wrote above.

  39. Ternary April 4, 2019 2:25 pm

    It is not often that you can directly test a hypothesis about physical reality. Here it goes:

    Open an e-mail app on one of your electronic devices.
    Check if a new message was delivered in your in-box.
    If so, your electronic device has interacted over a network with a server or another network attached device.

    That is a physical and verifiable manifestation. I you are so inclined, you can follow the signal channel through Name Servers, modulators, demodulators, antennas, repeaters and what else there is in equipment in the channel path.

    You may not like it. You may not understand it. But physical it is. To assert that the appearance of an e-mail message is an abstract idea is nonsense and directly contradicts of what is understood to be abstract.

    Undoubtedly, there runs a mystical/unscientific streak in our society. The anti-evolution crowd is an example of that, of which “the young earth creationists” are among the nuttiest to get a public forum. But this decision is definitely on the list.

    No, no, the judges say: we only maintain that communication networks “are directed to an abstract idea.” As if that explains anything.

    What the heck is “directed to an abstract idea” if the phenomenon itself is physical? And what makes some physical phenomena directed to an abstract idea and others not? If that determination is so arbitrary that only Courts can determine what it is, then it cannot be good.

    The Court decision in this case ranks high on the “are they nuts?” list. In fact I would expect a banner news alert “US Court determines that communication networks are abstract ideas.” The silence of Europeans and Chinese on this continuous effort to destroy our own patent system is conspicuous. They probably figure “not to interfere with an opponent when he is destroying himself.”

  40. B April 4, 2019 3:49 pm

    “Both are nonsensical. There is no relationship between how well something is known to whether it is abstract or not”

    I said pretty much the same thing in the Villena SCOTUS petition. 112(a) and 112(f) especially.

    But, hey, the courts can’t even count to 103 much less 112

  41. blueBlood April 4, 2019 3:55 pm

    As painful as the next statement is, I think we need to have the courage to look at behind the scene powers influencing court decisions. A well known patent attorney shared a presentation with me from an ABA conference, showing the eerie similarities between Alice and EU patent policies. Perhaps the courts are being pressured for longer term global government goals. These may very well be worthy goals, if true, but the carnage is plain for all to see. It is no way to make a sausage.

  42. BP April 4, 2019 4:44 pm

    @35 “The silence of Europeans and Chinese on this continuous effort to destroy our own patent system is conspicuous.”

    Consider an opposition proceeding at the EPO where a panel of three sits for 12 hours to hear arguments and ask questions – to get a fair/just and scientifically correct result.

    The US has no such patience for fairness, justice or scientific correctness. The Fed Cir judges are not stupid, they just love their power and Rule 36 (vacation time, going home early, . . .).

    The “law” on 101 is corrupt because the system is corrupt. Like two children playing with the volume knob, one turns it right, the other left. We will always be playing this “game” with 101 because the US condones corruption. We see that in the lack of anti-trust actions. Sure, the US needs corrupt global corporate behemoths to compete (too big to fail), but at what cost?

    The EU’s actions on anti-trust and individual rights (e.g., GDPR) are reflected in the EPO’s actions. Again, would you ever find a PTAB panel willing to spend 12 hours to hear argument to make sure they get it right? No way!

  43. chrisw April 4, 2019 5:55 pm

    What surprises me, is that so many have been so oblivious to the trends for such a long time, and that many seem surprised. Recall the Clinton presidency and the introduction of “Outcome Based Education” into the population via NEA creation under Carter. Many called foul over what it would produce, and here we are 25 years later.

    Recall, Bastiat writing in “The Law”…

    “…But it is also true that a man may live and satisfy his wants by seizing and consuming the products of the labor of others. This process is the origin of plunder.

    Now since man is naturally inclined to avoid pain — and since labor is pain in itself — it follows that men will resort to plunder whenever plunder is easier than work. History shows this quite clearly. And under these conditions, neither religion nor morality can stop it.

    When, then, does plunder stop? It stops when it becomes more painful and more dangerous than labor.

    It is evident, then, that the proper purpose of law is to use the power of its collective force to stop this fatal tendency to plunder instead of to work. All the measures of the law should protect property and punish plunder.

    But, generally, the law is made by one man or one class of men. And since law cannot operate without the sanction and support of a dominating force, this force must be entrusted to those who make the laws.

    This fact, combined with the fatal tendency that exists in the heart of man to satisfy his wants with the least possible effort, explains the almost universal perversion of the law. Thus it is easy to understand how law, instead of checking injustice, becomes the invincible weapon of injustice. It is easy to understand why the law is used by the legislator to destroy in varying degrees among the rest of the people, their personal independence by slavery, their liberty by oppression, and their property by plunder. This is done for the benefit of the person who makes the law, and in proportion to the power that he holds.” http://bastiat.org/en/the_law.html

    The point is, with the fruits of OBE clearly spilt on the banquet table, the plunderers know they can get away with anything they fancy. A proper view includes many facets including the simultaneous mass influx of immigrants to Western Countries, the movement of production and tech out of the US, the decrease in IQ of US college grads from about 112 to about 102 since 1996, the increase in illnesses, diabetes, autism, cancers, astronomical tuition increases due to universities becoming more like financial institutions and at the same time attacking free speech. Its prudent to see the larger picture, to identify the root cause since striking at the root is the only way to rid onesself of weeds “There are a thousand hacking at the branches of evil to one who is striking at the root.” – Thoreau. If you might think I’m off on a tangent, these issues define the Zeitgeist, and the cutting of property rights, Marx, is great for the powers that be, because it eliminates competition. With regards to Man’s eternal struggle for freedom, its clearly a step backwards to monarchy, plutocracy. I’ve now seen years of biquering and complaining, surprise or whatever over court decisions. I think if you look at them divorced from the apparent Zeitgeist, the commentary is obviously, non-productive. Wish with one hand and hope with the other. I saw where retail shutdowns are 92% greater in the US in 2019. The trend is for there to be two classes without any middle. That means, very few patent lawyers will be needed, maybe 1500 for the entire US. Why invent, if it can’t be protected ?? That’s precisely what the owners desire – no competition. The way to get action, is if patent lawyers march on the Capitol. Unfortunately, most aren’t the Patrick Henry type, so don’t look for that. On the other hand, Malcolm Gladwell’s “Tipping Point” book made one good point – that small numbers of people can make large changes in short time spans. If only there remained judges with the courage to do the right thing…. and not sell us out.

  44. concerned April 5, 2019 6:52 am

    Chrisw:

    “When, then, does plunder stop? It stops when it becomes more painful and more dangerous than labor.”

    I wrote that the patent situation is like sub prime mortgages. The fraud in sub prime mortgages only stopped when it threatened the ENTIRE country, thus also threatening those that held power.

    I hope I am wrong. I hope it does not take a near collapse of our financial system to stop the stealing of our ideas. I hope it would stop sooner, however, history may show us differently.

  45. Anon April 5, 2019 9:42 am

    Several of the conversations here harken to my words immediately following the lost chance to “swing back” with the Alice decision: perhaps its type to STOMP on the gas pedal, crash through the guard rail and get to a point to reset things SOONER rather than later.

  46. BP April 5, 2019 9:46 am

    @40 chrisw, some worthy points. Lessig, Trippi and Swartz organized “Root Strikers”, I was a donor. We all know what happened to Aaron – in the name of CR law – that alone should have been enough to raise disgust and action. We also know what has happened to CR law, one company is now the de facto CR regulator. On behalf of a non-profit corp, on a pro bono basis, I was neck deep in lawsuits against several of the “too big to fail” corrupt, lying banks. Their lapdog, the OCC sent me to hell. One US Senator leant support. The cases were one sided/clear cut and we prevailed. Those banks knew that, yet nevertheless found gutless lawyers to represent them. Top state legislators wouldn’t sponsor new bills for fear of reprisal. In the old days, you could see the mobsters and they had a code of conduct. And, in the early 1990s, my classmate’s father got a 9 year prison sentence for his participation in the S&L “crisis”. Today, the roots are as many as the branches and corruption reigns.

  47. Anon April 5, 2019 10:08 am

    chrisw,

    Your post above with the link to the work of Frédéric Bastiat directly reflects a past conversation on this blog between myself and the late Ed (Ned) Heller.

    His view was the state before man, while mine reflected the Bastiat view.

    Thank you for the link.

  48. chrisw April 5, 2019 12:39 pm

    I look at the AIA and consider it was put forth back when the Brzezinski plan as outlined in The Grand Chessboard was in play. Yet, due to policy failures its become painfully clear that hegemony on the Eurasian stage has been lost, due to policy snafus or whatever reasons. We now have Russia, China and others forming economic alliances, and Saudis yesterday threatening to go off the petrodollar.

    My read is that the AIA, Alice, May… and the recent court decisions mucking the mire with more bombastic drivel about abstractness, qualify under cessante ratione legis, cessat et ipsa lex” to be set aside. There are no longer the same reasons extant for gutting the patent system.

    The successful way to reverse the nonsense, is to make an impassioned plea to those holding the reigns from behind the scenes. Muck akin to how the spokesperson for a new venture gives a pitch to venture capitalists, one must show that the benefits to restoring the system are greater than the negatives of permitting the effects of these court decisions to have the color of law.

    Always, always, people over-react. And people and committees do make mistakes. AIA and these decisions went too far, and the pendulum needs to be brought back to swing the other way.

    So what if the water ballon filler inventor guy makes $ 10MM on an invention. So what, if a plumber invents a gadget that improves plumbing. And even, so what if some garage inventor comes up with something that disrupts the auto industry, or even improves financial transactions. The country dealt with these scenarios thousands of times over two centuries and progress was made. Who is it that wants to stop progress ? Don’t they see, they are sitting on the wrong side of the branch as they hack away with the saw ?

    I think to begin by determining an approximate dollar value to the economy by having inventors’ rights protected, then compare it to the current scenario, also factoring in just where the owners of the US want to take it. They’ve plundered more than their fair share, and don’t get me wrong, there will always be plunder, proverbs 22:7 is an ancient maxim. All I’m saying is things have swung too far, ridiculously so. The owners and policy makers need to realize this, and they need to be shown that there is benefit to them, for restoring the system. They need to learn to quit being so drunk with power, and be shown that the destruction is unwarranted and can only lead to their own peril. If makind’s innovative talents are not nurtured, the time may come when we’re faced with some serious technical hurdles, and there won’t be anyone around to solve them.

    As re the argument of State v. Man, which should be superior, one can argue both sides well. It is akin to the question of whether light behaves as a particle or as a wave, both are correct. But, the State is man’s creation and is controlled by men. So basically State v. Man equates to A Few Men v. the individual, a means for men to control men. The question becomes, who gets to control everybody ? That’s antithetical and repugnant to the constitution, which has a few apparent flaws we now see. Learn by mistakes of the past is all one can do. As contradictory as it may seem, I’m a big fan of E.M. House

  49. Anon April 5, 2019 2:38 pm

    The successful way to reverse the nonsense, is to make an impassioned plea to those holding the reigns from behind the scenes.

    See my posts re: the Kavanaugh Scissors.

    But, as to “As re the argument of State v. Man, which should be superior, one can argue both sides well. It is akin to the question of whether light behaves as a particle or as a wave, both are correct.

    Sorry — I cannot agree. “Correct” is perhaps NOT the correct term, as I would posit that both are possible, but merely being possible should not be confused with the underlying metrics that may (or should) constitute “correctness.”

    Totalitarianism may be powerful, and a benevolent dictatorship may well be “benevolent” (for at least a short time), but neither can be said to be “correct” when compared to the larger principles that are the foundation of the US Sovereign ‘experiment.’

    I will check out E. M. House, although it should be noted that WW II was a direct result of how WW I was wrapped up (not sure if House can be impugned by that, but his involvement may be taken as having some influence there – even as he and Wilson very much did not see eye to eye — also, his One World Order view (continuing with FDR), is not something that I would espouse, as I fully support a Sovereign-centric view (with no shame with wanting the US Sovereign to be superior to any other sovereign).

  50. Miffed April 8, 2019 5:14 pm

    Reyna seems to like Celebrity brands. If he has never heard of you, no one else is likely to either, regardless of your accomplishment. Proust, she’s a real jewel. One gets the sense that she weighs her decisons based on the academic level of the inventors. If they have many letters after their names, then she feels more comfortable. That is because she has not a whiff of sense of what technical people do. Someone should tell her that Jobs did not even bother with a BA.

  51. GuyP April 21, 2019 2:33 am

    So true, I cannot agree more. It became a fashion to decide based on 101, as it gets the attention of the eco-system without real judicial cause.

    After reading the Alice hearing procedure I can claim that even there it should be handled as a 102 or 103 case, and not 101.

    Guess we are all confused, and will be…

  52. JRE May 16, 2019 4:20 am

    I represent many non-US clients. It’s decisions such as these that have contributed to a trend that I’ve seen become more common on the part of clients, which is to entirely avoid filing in the US, as they are recognizing that the USPTO has become pathetic (e.g., Examiners openly stating during Examiner interviews that they do not personally agree with the Guidelines, and thus will not allow claims even when all criteria set forth in the Guidelines have plainly been met), and US courts are useless with respect to making patent-related decisions rooted in even somewhat sound logical and technological principles.

  53. RCole May 17, 2019 8:25 pm

    Congress must step in and end the travesty of justice that is Alice 101. They should set PTO guidelines for eligibility and bar the courts from applying the test against issued claims. This would shift the onus to the PTO to issue eligible claims, where it belongs, and put an end to this idiocracy.

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