The Federal Circuit Must Revisit Its Imprudent Decision in Chargepoint v. SemaConnect

By Russell Slifer
July 14, 2019

“The panel began its Section 101 analysis of ChargePoint’s patents by doing just what the Court in Alice said was improper: analyzing whether the claim merely involves an abstract idea.”

https://depositphotos.com/2329825/stock-photo-right-decision-wrong-decision-sign.htmlI recently authored an article for IPWatchdog arguing that the Federal Circuit in ChargePoint Inc. v. SemaConnect, Inc., (2018-1739) effectively overruled the new U.S. Patent and Trademark Office (USPTO) patent eligibility guidance. In my opinion, the ChargePoint decision was the very case that the Supreme Court in Alice Corp. v. CLS Bank warned would swallow all of patent law. After all, the Federal Circuit had the opportunity to take the Court’s caution seriously and interpret the abstract-based eligibility decision narrowly. It did not.

Hoping for the remote chance the court will correct its error, I filed an amicus brief seeking rehearing en banc. My blunt assessment of the court’s reasoning and repercussions has been called inflammatory by SemaConnect. But it was the Supreme Court’s warning, not mine.

An Improper Approach

In the brief I noted that the panel began its Section 101 analysis of ChargePoint’s patents by doing just what the Court in Alice said was improper: analyzing whether the claim merely involves an abstract idea. The ChargePoint panel found the asserted claims involved “the abstract idea of communicating requests to a remote server and receiving communications from that server, i.e., communication over a network.”

I am not sure what is abstract about network communications, but the panel went so far as to call networked charging stations “building blocks of science and technology” that needed protection from preemption. Specifically, the panel stated:

With these indications from the specification in mind, we return to the claim language itself to consider the extent to which the claim would preempt building blocks of science and technology. We agree with SemaConnect that, based on the claim language, claim 1 would preempt the use of any networked charging stations.

ChargePoint’s patents clearly provide improved vehicle charging stations over prior art stations by including more hardware components to allow more sophisticated management of the vehicle charging operation. Yet, under the second Alice step the panel merely characterized the electrical components of the claimed charging station (for example controllable switch, transceiver, controller) as generic and stated that “the claims do nothing to improve how charging stations function; instead, the claims merely add generic networking capabilities to those charging stations and say “apply it.” This is simply an abstract-idea-based solution implemented with generic technical components in a conventional way.”

This is not the test set forth in Alice. If it is, we definitely need Congress to fix 101 now! Manny Schecter of IBM referenced the Chargepoint case in his recent testimony to Congress about patent eligibility law, rightly asking, “If courts can get that wrong, consider [artificial intelligence] AI, where the purpose is to abstract the functioning of the human brain.”

Applying the Panel’s Reconceptualized Alice test

If you use the panel’s reasoning on an example of one developing technology, driverless vehicles, we would conclude that every driverless vehicle innovation involves, and is merely focused on, the abstract idea of automated vehicle operation. In other words, autonomous vehicle inventions do nothing to improve a vehicle’s function over prior art vehicles. What can an autonomous vehicle do that humans have not already done in controlling a vehicle? Instead, they merely add generic control capabilities normally performed by a human to those vehicles and say “apply it”. This same tortured analysis can be performed on any emerging technology.

Assuming for purposes of Section101 analysis that vehicle charging stations prior to ChargePoint’s invention did not contain a controllable switch, transceiver and controller connected to operate as claimed (Sections 102 and 103), the question to be answered is: can an inventive concept be found in the ordered combination of claim limitations that transform the new abstract idea of “network communication” into a particular, practical application of that abstract idea? The claims of each ChargePoint patent clearly pass this test.

Is the USPTO Guidance Still Good?

To help reduce uncertainty about 101, the USPTO issued guidance to its examiners and the public which explains that abstract ideas identified by the courts can be grouped as, e.g., mathematical concepts, certain methods of organizing human activity, and mental processes. The USPTO correctly instructs that a claim cannot be “directed to” a judicial exception if the claim recites additional elements that integrate the exception into a practical application of that exception.

Although the USPTO guidance is not binding on the courts, I have stated that the panel decision effectively overrules the guidance and frustrates the efforts of the USPTO to bring more clarity and predictability to its stakeholders with respect to its application of Section101 jurisprudence. I am well aware that the Federal Circuit did not even address the guidance in the decision, but I cannot reach any other conclusion while the ChargePoint decision is precedent.

Make no mistake, I support the USPTO guidance as both necessary and correct. Use it to obtain patents but recognize that it holds no authority outside of the Agency.

Absurdity

The irony of the panel’s decision is that had the patent claims merely listed the electrical components without reciting the network function of the transceiver, they would easily be considered patent eligible. For example:

  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; and

a controller, coupled with the control device and the transceiver, to cause the control device to turn on the electric supply.

Perhaps ChargePoint’s claims would fail under Sections 102 or 103 based on prior art, but we will never know because the panel has expanded the second step of Alice from “determining if a claim transforms the nature of the claim into a patent eligible application” to “does the claim improve the art in some unconventional way.”

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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 21 Comments comments. Join the discussion.

  1. concerned July 15, 2019 6:37 am

    SCOTUS places a two part Alice rule in play and warns not to allow the rule to swallow all of patent law. Then the rule swallows all of patent law to include the very premise of why patent laws are created. Then SCOTUS sits idle and refuses “cert” to correct what SCOTUS warned to not allow.

    Add in patent applications are rejected using statements that are not factual on the surface to any common person and society has a legal setting that is beyond logic. Routine, conventional and well understood is a remarkable statement on accomplishments never reached or performed by mankind.

    My personal consolation to this entire frustrating mess is I only got lucky, or unlucky, to solve just one problem that escaped experts and working professionals for decades. It was an outlier beyond my normal capabilities likely not to repeat.

    I do not know how professionals can work in this kind of environment as a career, it has to be incredibly frustrating. My attorney has maintained complete professionalism in handling the matter. Lately he used the phrase “I am looking forward to seeing how USPTO responds to this argument” when filing our appeal brief, which is about as close to him dropping a “F” bomb as it comes.

    Sure, the Federal Circuit and many others “must” do a lot of things. Will they and why have they not?

  2. Anon July 15, 2019 6:48 am

    Sorry Mr. Slifer, but the CAFC will not even bother with taking Athena en banc, so there is no way that they will do as you suggest here.

    They are broken.

    (And it is the Supreme Court, training them with a firehose that broke them).

    You put too much emphasis on the throw-away “warning” that the Supreme Court themselves should have heeded.

  3. Night Writer July 15, 2019 8:01 am

    There is just a simple reality with Alice that few face. With Alice a court can do pretty much whatever they want with eligibility. And the Scotus knew exactly what they were doing. They handed the lower courts a case that said, you can invalidate any patent and any area of patentability with this case at the SJ stage. We hand you the ultimate power to shape patents anyway you want.

  4. Ke6gwf July 15, 2019 11:03 am

    I come at this from a different perspective, as an industrial engineer.
    What gas pump in the last 10 years has not had a controller, a network transceiver, and a control device to turn gas flow on and off?
    Did not Tesla’s superchargers have these parts from the beginning to only activate the charger when a customer with a good account connected?
    What public charging station ever has not had this function?

    Now, maybe they didn’t word things right legally according to case law, you are the expert on that, but they are trying to patent obvious methods that have long been in use by anyone providing fuel to vehicles.
    Natural gas and hydrogen fill stations work the same way.

    What about this patent was novel art that should have been protected?

  5. B July 15, 2019 11:42 am

    What is there to revisit? They ignored just the right limitations. They made up just the right law out of less than nothing. They killed a perfectly good patent. Just because the holding is inconsistent with Berkheimer and Aatrix means nothing. The CAFC has done its job as they see fit by dismissing all issues of fact as settled – no evidence needed just because.

    Excellent article, Mr. Silfer, as was your previous ChargePoint article. However, ChargePoint drew Prost, Reyna, and Taranto. Patent ineligibility was a foregone conclusion.

  6. B July 15, 2019 11:54 am

    @ Ke6gwf “What gas pump in the last 10 years has not had a controller, a network transceiver, and a control device to turn gas flow on and off? . . . but they are trying to patent obvious methods “

    Great questions and observations – perfect for a 102/103 analysis. Inappropriate for a 101 argument.

    No one here declares the ChargePoint claims must be nonobvious or valid at the end of the day. What we demand is a process that doesn’t involve three judges pulling “evidence” out of their hindquarters and inventing new law.

  7. Pro Say July 15, 2019 2:58 pm

    “The only valid patent is one which we have yet to get our hands on.”

    “Everything which can be invented has been invented.”

    “Given these two facts — as it is accordingly no longer needed — Congress should close this Court down.”

    — CAFC

  8. Cosmo July 15, 2019 5:47 pm

    @Ke6gwf – I would suggest reading the actual claim, reading the briefs, and listening to the oral argument. The claim is not simply a controller for charging a car. As others have noted, 101 is not about whether a claim is novel or obvious, it’s about whether the patent laws are designed to protect such inventions if they also pass 102, 103, and 112.

    The real problem is the Supreme Court and non-patent attorneys don’t understand the HUGE body of law that filters out many inventions. 101 was not designed to be the sledge hammer it has turned into. The IPR process was crafted as a tool to efficiently deal with 102/103 issues for patents some feel should not have been issued.

  9. Concerned July 15, 2019 8:48 pm

    Right on Cosmo! I had no 102,103 and 112 rejections. So I got nailed by a 101 rejection as the rejection of last resort.

    The word on the street is software applications, no matter what problem is being solved, are dead on arrival.

    The examiner even told me 3 times in a phone interview he saw patentability. Yet the higher ups, I presume, said kill it.

  10. B July 15, 2019 9:12 pm

    Test – comment whether you think the CAFC would allow the following claim under Alice Corp.

    An inventory control and reporting system, comprising:
    a data input device having switch means for encoding information related to sequential transactions, each of the transactions having articles associated therewith, said information including transaction identity data and data relating to the transactions;
    a data processor including memory operable for recording said information, means for generating an inventory report and means for associating sequential transactions with unique indicia sequentially assigned to the transactions and for generating at least one report of said transactions, the unique indicia and the data relating to the transactions being reconcilable against one another;
    a printer operable under control of the data processor to generate a written record for each of the sequential transactions, the written record including optically-detectable bar codes printed only in substantial coincidence with each said transaction and at least part of the written record bearing a portion to be attached to said articles; and,
    at least one optical scanner for data communication with the data processor and operable to detect said bar codes on all articles passing a predetermined station.

  11. Cosmo July 16, 2019 7:00 am

    @B – with the means plus function language – it is not possible to determine without knowing the disclosed structures corresponding to the functions. Read Enfish and Visual Memory.

    @Concerned – My recommendation is to hire a registered patent attorney that knows the current state of the law and competent to do patent prosecution.

  12. Concerned July 16, 2019 9:54 am

    Cosmo:

    Thank you for your suggestion.

    I believe my patent attorney is very competent. His arguments seem grounded in law, supported by USPTO memos and the MPEP, hard evidence in the field of technology, and the actual language of the law written by Congress.

    It is the written rejection of the USPTO that seems baseless using court cases outside my field of technology that are also irrelevant to the matter, irreconcilable with the hard evidence on the record, not supported by their very own memos by Deputy Barr, plus the famous memo of Jan 2019 by the Director. If their is any fact of law in the rejection, it was not articulated.

    BTW: I was honored that “B” has been though my entire file wrapper and found that my attorney is highly competent and doing a great job.

  13. Anon July 16, 2019 10:44 am

    Concerned,

    I suspect that Cosmo is not a regular here and has not seen your story unfold. Had he done so, he undoubtedly would have realized that his advice, while well-meaning, was not on point to the actions that you have already done.

    The larger point to the story here is — as others have pointed out — that we have an administrative agency abusing power (and doing so within its inner ‘shadow’ workings and largely outside of the direct control of the numerous Directors that have overseen the Office.

  14. Cosmo July 16, 2019 10:58 am

    @Concerned,

    It appeared you may have been pro se from your comments. As far as the PTO guidelines go, they are just guidelines. Chargepoint made this clear and the Fed Cir has given it no weight.

    Also, with respect to 101 law, it applies to all fields of technology and is focused on the claims. With all due respect, attempting to distinguish cases because they may be related to a different field of technology isn’t likely to be a winning strategy. Also the fact that you have evidence in your record (FH?) or the spec is not what the Fed. Cir. is looking for and has not been very helpful in a full 101 review – notwithstanding 12(b)(6) or 12(c) reviews.

    The case law is disappointing. If you have time, listen to the oral arguments. Many appellants have made the same arguments you are making and lost.

    I understand being upset with the state of the law, but I don’t believe the PTO is the villain. To the contrary, they are helping you get a claim that won’t be immediately swatted down by the Fed. Cir.

  15. B July 16, 2019 11:21 am

    @ Cosmo “@B – with the means plus function language – it is not possible to determine without knowing the disclosed structures corresponding to the functions. Read Enfish and Visual Memory.”

    You need to read the ChargePoint opinion – particularly Mayer’s concurrence. Claim construction isn’t necessary according to Mayer. Also read Investpic where the hapless Judge Taranto nixes all functional language. I’ve also seen the CAFC Rule 36 a large number of 101 issues that were all functional language. Also, did you put in too many examples in your specification? If you did you’ve preempting too much. Seriously not kidding on this. Saw a guy argue this at the CAFC and win.

    w.r.t. concerned’s attorney – he does a good job. I’ve reviewed his work and he never once dropped an issue. Concerned is facing the typical “this is new and nonobvious under 102/103, but its also incredibly well-established, routine, and conventional under 101.”

    Don’t doubt this level of stupidity. I lost a case at the CAFC on this. It took three judges 5 months to figure out how to affirm a 101 rejection when the PTAB stated five different limitations were unknown and nonobvious under 102/103. In the end, the CAFC simply ignored practically every issue while outright lying about the record.

  16. Cosmo July 16, 2019 11:28 am

    @B,

    Enfish was allowed because means plus function terms pulled in the 4-step algorithm in from the claim.

    Without that “structure” the claims would have been held unpatentable. Listen to Judge Hughes statements in visual memory and other cases.

    Functional results in the claims don’t get the benefit of disclosed structure in the spec.

    So, the claims in Markman would include more structure than what you see in the claims.

  17. B July 16, 2019 11:29 am

    @ Cosmo

    FYI, the claim above was one of the Markman v. Westview claims.

    Also, with respect to 101 law, it applies to all fields of technology . . . .

    In theory, yes. In practice, not so much. American Axle is the only outlying case I’ve heard about so far.

    I understand being upset with the state of the law, but I don’t believe the PTO is the villain. To the contrary, they are helping you get a claim that won’t be immediately swatted down by the Fed. Cir.

    No, they are not. You haven’t seen the claims, and so respectfully your position is one of faith, not of knowledge.

  18. Concerned July 16, 2019 11:46 am

    Anon and Cosmo: Thank you.

    We also advanced the arguments that concrete steps that solve a real problem which has been proven to be beyond the reach of experts and professionals (for 63 years) are patentable. Not only case law suggests as much, the USPTO memos are consistent with the court decisions. Amdoc, Trading Docs, etc.

    Alice also implied as much.

  19. B July 16, 2019 2:03 pm

    @ Cosmo “Enfish was allowed because means plus function terms pulled in the 4-step algorithm in from the claim.”

    I’m very familiar with Enfish, and have had the occasion to argue Enfish to Judge Hughes himself, who was unaware that those claims did nothing but receive and process data. I kid you not. There’s audio.

    Without that “structure” the claims would have been held unpatentable. Listen to Judge Hughes statements in visual memory and other cases.

    Mostly Judge Hughes likes to scream at counsel, and when he does like to make coherent legal points they’re inconsistent case to case. About one and a half years before Berkheimer (on another case) Judge Hughes screamed at me stating “Don’t you think these claims are abstract?” I responded stating “Don’t you think there should be evidence beyond an unsupported accusation that the claims are abstract?”

    That didn’t go well despite Judge Hughes’ Enfish opinion, which was based on a comparison of the claim limitations to the state of the art.

    Functional results in the claims don’t get the benefit of disclosed structure in the spec.

    Depends on how claimed.

    So, the claims in Markman would include more structure than what you see in the claims.

    The “means for” limitations yes. My point is that the Markman claims are directed to the abstract idea of inventory control using a computer, and those claims would fail Alice Corp.

    I considered filing an application to similar inventory control claims except using RFIDs rather than bar codes, then arguing the inevitable 101 rejection to the CAFC, but Automated Tracking Solutions v. Coca-Cola beat me to it. Of course, Judge Stoll completely ignored half of the claims in penning her b.s. opinion. She does that sort of stuff.

    My point: there’s nothing you can say that will ever convince me that the CAFC is remotely sane or consistent case to case on Alice Corp. For instance, Judge Reyna is so out to lunch that he’s completely unaware that his own McRO decision was based on a comparison of the art at the time of the patent, rather than as an issue of law. Makes you wonder why he dissented in Berkheimer and Aatrix. Meanwhile, Mayer signed onto Berkheimer, but later badmouthed the case in Guldenaar.

    Athena is just final evidence most of the CAFC are just children who refuse to clean their room.

    A few years ago IBM had an Alice/Mayo rejection to a 900 word claim affirmed at the PTAB. What is or is not in a claim is meaningless.

  20. Concerned July 17, 2019 7:32 am

    B: You know we are on the same page.

    Just like the sub prime mortgage fruad, people of intelligence were running around the country swearing that making loans to people without incomes was wonderful. 40% of the sub prime mortgages originated in 2006-2007 did not even make the first payment on a 360 month note. Yet intelligent people swore this was great in order to maximize their financial advantage for as long as they could milk it.

    Deep down. and under truth serum, nobody can see this current patent situation as fair and just. One court expands the law negatively toward inventors. the next court expands it negatively further. Both courts caution against it, yet nobody corrects it. I cannot even grasp why injunctions are de facto barred on a wholesale basis.

    I did not find my patent application handled fairly by the USPTO. The application should have been approved, let the infringer rebut all my facts, evidence, USPTO memos, university studies. State Medicaid authorities etc. And if somehow the infringer could convince judges that this folly is just, a jury of my peers would never find In favor of madness.

    No common person with a horrible disease would give a flying “f” if I cured their disease using a generic computer. They would be thankful for their life.

    No common person would care if I pulled out my generic laptop and somehow prevented our airplane from crashing with seconds to spare. Captain Sully was praised by his passengers for landing in the Hudson river, yet the “so called” authorities wanted to foolishly criticize his actions.

    Common people want solutions, not silly word games, rules or inaction from the “so called” authorities.

  21. B July 20, 2019 3:11 pm

    For anyone interested, Investpic just filed for rehearing at the SCOTUS.

    Investpic, Villena, and Bhagat all have active petitions for rehearing.

    https://www.supremecourt.gov/DocketPDF/18/18-1199/108748/20190719162802591_Petition%20for%20Rehearing.pdf

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