Federal Circuit Nixes Claims for Garage Door Opener as Abstract Under Alice

By Eileen McDermott
August 22, 2019

“Wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.” – Federal Circuit Judge Raymond Chen

https://depositphotos.com/35440567/stock-photo-ineligible-warning-road-sign-illustration.htmlA Federal Circuit panel comprising Judges Lourie, O’Malley and Chen issued a precedential opinion yesterday, August 21, in part reversing a district court’s finding that certain claims of Chamberlain Group, Inc.’s (CGI’s) patent for a “moveable barrier operator” (for example, a garage door opener) were not abstract under Section 101.

The representative claim 1 of U.S. Patent No. 7,224,275 (the ‘275 patent) recites:

  1. A movable barrier operator comprising:

a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;

a movable barrier interface that is operably coupled to the controller;

a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:

corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

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Distinguishing Core Wireless

The United States District Court for the Northern District of Illinois denied Techtronic Industries’ (TTI’s) motion for judgment as a matter of law that the asserted claims were patent-ineligible and granted CGI’s motions for enhanced damages and attorney fees. The district court disagreed with TTI’s assertion that the claims at issue were directed to the abstract idea of wireless transmission of content, instead finding that “[h]ere, the ’275 patent claims are not directed to the transmission of data, but to garage door openers that wirelessly transmit status information.” The district court also said that the asserted claims were directed to “a particular improvement over prior art which uses a particular manner of sending and experiencing data,” citing the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018) to support the patent eligibility of such technology.

In Core Wireless, the Federal Circuit found that “claims drawn to improved interfaces for electronic devices with small screens that allowed users to more quickly access desired data stored in, and functions of applications included in, the electronic devices were not drawn to the abstract idea of an index.”  But the Court in the present case distinguished Core Wireless, determining that the CGI claims at issue “merely recite a system that communicates status information, in the same ‘well understood’ manner that wireless transmissions have always occurred.”

The Federal Circuit panel also rejected CGI’s arguments that: 1) the claims were directed to “a novel combination of its prior art movable barrier operator with a transmitter that is wireless,” citing its analysis in Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016), and 2) that the asserted claims were directed to “physical real world manifestation[s] of an improved machine.” The Court explained:

Without more, the mere physical nature of CGI’s claim elements (e.g., controller, interface, and wireless data transmitter) is not enough to save the claims from abstractness, where the claimed advance is directed to the wireless communication of status information using off-the-shelf technology for its intended purpose. See In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018).

Clarifying Alice Step Two

At step two of the Alice analysis, the Court likened CGI’s claims to the Alice invention, finding that the specification merely cited conventional components in a generic way that could not save the claims from abstractness or prove an inventive concept under Alice step two. The Court further stated that CGI misunderstood Federal Circuit case law when it attempted to argue that “the ordered combination of the asserted claims’ elements provides the inventive concept because ‘there is no evidence in the record’ that ‘a new type of movable barrier operator that includes an integrated controller and a wireless transmitter to transmit a status signal’ was ‘well-understood, routine and conventional to a skilled artisan.’” The Court explained:

The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” Mayo, 566 U.S. at 73, and (2) whether all of the steps “as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately,” id. at 79 (emphasis added). In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the “inventive concept”? This analysis applies to both system and method claims. Alice, 573 U.S. at 226.

Because the Court found that wireless transmission was the only element of the claims that was inventive over the prior art, and “the specification makes clear that transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology,” and since “wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to,” the Court held that “no inventive concept exists in the asserted claims sufficient to transform the abstract idea of communicating status information about a system into a patent-eligible application of that idea.”

Anticipation and Other Matters

The Court also ruled with respect to CGI’s U.S. Patent No. 7,635,966 (the ‘966 patent) that the district court was correct in upholding a jury verdict that it was not anticipated, although the Court did disagree with the district court’s suggestion that there is “a blanket rule that two embodiments disclosed in a reference can never be considered in combination to make a finding of anticipation.”

Ultimately, the Federal Circuit reversed the district court’s judgment as a matter of law with respect to the asserted claims of the ’275 patent; affirmed the jury’s verdict on anticipation with respect to the asserted claims of the ’966 patent and the district court’s determinations on TTI’s motion for a new trial; vacated the district court’s injunction and its awards of enhanced damages and attorney fees; and remanded the case for reconsideration of enhanced damages and attorney fees consistent with the Court’s opinion.

Judge Chen authored the opinion for the Court.

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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 20 Comments comments. Join the discussion.

  1. step back August 22, 2019 12:41 pm

    One need not belabor oneself in that relentless hunt for the elusive “inventive concept”.
    Obviously it’s never there.
    (Tongue in cheek)

  2. Jeff Lindsay August 23, 2019 5:22 am

    If an invention is “well-understood, routine and conventional,” then it should clearly be obvious. So why isn’t the inquiry centered around obviousness? I suggest it is because an obviousness attack requires genuine analysis of prior art and has several ways for a patent holder to demonstrate that the art is deficient and that the invention is non-obvious. But none of that heavy lifting is needed when a judge can wave the Abstraction wand and, presto, find the invention of a loathsome “inventor” is not even patent eligible because of a subjective feeling that something is abstract, whatever that means. This kind of hocus pocus must stop!

  3. Damn August 23, 2019 5:33 am

    So first you look at the claim and determine whether it’s abstract or not.

    If not, remove all the parts that already exist. Look in isolation at the element that is inventive, and determine whether it is abstract.

    If it’s not yet abstract, simplify the element to its functionality by removing all limitations.

    Is it abstract now?

    Oh good. No patent for you.

    This conflation of inventiveness and abstractness is just mind blowing. The question shouldn’t be whether the “new part standing alone” is abstract, but whether the claim itself defines an abstract thing.

    I can’t wait to see the USPTO guidance after this.

  4. Benny August 23, 2019 6:08 am

    Should have been rejected for grant under 103.

  5. Joachim Martillo August 23, 2019 7:57 am

    The CAFC Judges and SCOTUS conflate unpatentability with patent-ineligibility.

    Claim 1 of the ‘275 patent is obviously patent-eligible.

    https://www.linkedin.com/posts/joachim-martillo-11ab332_fixing101requiresfixing100pdf-activity-6570633463802671104-xPnx

  6. TFCFM August 23, 2019 10:13 am

    What I can’t understand after reading only the Federal Circuit’s opinion is why the patent was held invalid as *obvious*.

    The FC opinion states that the
    only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly
    and that the
    specification admits that the act of transmitting data wirelessly is “well understood in the art,” and no other changes to the generically claimed movable barrier operator are recited in the asserted claims or described in the specification.

    How is this NOT a “poster child” case of obviousness?

    Does anyone know (wild paranoid guesses discouraged) why obviousness-based invalidity wasn’t pursued here?

  7. Paul Johnson August 23, 2019 10:33 am

    If this movable barrier operator is not patent eligible, then an Examiner can now rely on this case to invalidate anything that moves, powers, controls, or communicates with anything else.

  8. Curious August 23, 2019 12:08 pm

    I can’t wait to see the USPTO guidance after this.
    Mathematical concept? Method of organizing human activity? Mental Process? No, no, and no.

    Chen writes:
    We conclude that claim 1 is directed to wirelessly communicating status information about a system.
    First, I doubt that accurately characterizes the “focus of the claimed advance over the prior art.” If so, this should have been an easy 103 rejection. The fact that it wasn’t means that there is something more there that the Federal Circuit is whitewashing away. Second, wireless communicating status information describes technology. That is not an “abstract idea.” If that is an “abstract idea,” what isn’t? The Federal Circuit abstracts the invention down to to a 7 word phrase and declares the result to be abstract. I can do that with any invention. If your description of an invention necessarily involves technology then it should NOT be deemed an abstract idea.

    The next phrase is probably the most troublesome:
    “Wirelessly communicating status information about a system is similar to abstract ideas we have found in our previous cases [cited omitted] explaining that courts typically ‘examine earlier cases in which a similar or parallel descriptive nature can be seen” as part of their abstract idea analysis.” The best way I can describe the problem with this analysis is by analogy and while I have several in mind, I’ll use this this one.

    Imagine a white paper plate. This white paper plate represents the scope of all possible subject matter. On this white paper plate, introduce a drop of ink. This drop represents a decision that the location on this white paper plate is patent ineligible. A drop of ink on a white paper plate (once introduced), however, will spread to form a circle of ink as the ink diffuses through the paper — this circle represents something “similar.” The Federal Circuit is basically saying is that as long as you place your next drop of ink into one of the prior diffused circles of ink that has spread, then that is OK because it is “similar” to a previous decision. What happens, over time, is that you create a bunch of overlapping circles of ink that will eventually spread over the entirety of the paper plate.

    For example, the Federal Circuit stated “Wirelessly communicating status information about a system is similar to abstract ideas we have found in our previous cases.” The next time, the Federal Circuit could state that “wirelessly communicating data is similar to the abstract idea we found in Chamberlain” (mobile phone inventions are unpatentable) In the next case, the Federal Circuit could say “communicating data” is similar to the abstract idea we found in the post-Chamberlain case (all telecommunication systems are now unpatentable). In each situation, the decision relies upon that technology as being “similar” to the prior technology that was deemed unpatentable. Also, it doesn’t help that the Federal Circuit overgeneralizes the inventions and the alleged abstract ideas to which these inventions are allegedly directed (essentially making the circles on the plates very large in size).

    For example, Electric Power Group has been frequently cited as stating that the collection, analysis, and display of available information is unpatentable. While the Federal Circuit decision put some limitations on this, those limitations have been ignored in the post-characterizations of this decision. Read expansively (which the Federal Circuit and USPTO like to do), Electric Power Group could render patent ineligible any patent directed to an graphical user interface, because that is what a graphical user interface does — it receives data (either from the user or elsewhere), it processes the data (i.e., analyzes it), and it presents the result of the analysis to the user.

    What the Supreme Court wrote in Alice (citing Mayo) was “we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Treading carefully is the complete opposite of what Chamberlain represents.

    In Alice, the Supreme Court also wrote “[l]ike the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce.’” and “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here.”

    Here, the first drop of ink was on fundamental economic practices long prevalent in our system of commerce with an admonition to tread carefully. A couple of days ago, the drop of ink landed on “Wirelessly communicating status information about a system.” It is anybody’s guess where the next drop of ink is going to fall. If a garage door opener is patent ineligible subject matter, what’s next?

  9. PTO-Indentured August 23, 2019 12:19 pm

    Adding to damn @3 — “no patent for you”:

    Pepper the loathsome individual inventor experience with this recipe:

    1. Don’t consider a claim in its entirety — go broader, how…
    2. Don’t consider any full clause of the claim in its entirety (or any of its inter-relatedness therein) — go broader, how…
    3. Don’t consider a full portion of a clause of the claim in its entirety — go broader, how…
    4. Direct the focus to only a particular word here and there in any one or more of 1-3 above, and grind at least one of such cherry-picked words (thus extremely-broadened) to dust, and voila! each claim of loathsome individual inventors is invalidated.

    More fun recipe options:
    4. State that the manner in which the inventor chose to use such an ‘objectively weak’ one or more more words (intentionally weakened / wildly broadened through isolation / stripped of any context whatsoever) is the thing, occurring over the course of an entire reexam that tilted the case to ‘exceptional’ — you know, because that’s all judges now need to show a case rises above ‘the ordinary’ (e.g., in contrast to all patent cases otherwise being ‘ordinary’).
    5. Make all attorneys fees accrued during the entire case — say, the better part of a million dollars — payable solely by the loathsome individual inventor, due to his or her case rising that ‘just enough’ above the ordinary, to be ‘exceptional’ (leveraging the cherry-picked word or two).
    6. Issue a decision — following any attempted appeal of the all-new (low bar) ‘exceptional’ determination — that is deliberately ‘non-precedential’ ensuring that the loathsome individual inventor will have no recourse to owing — probably forever — the ‘all attorneys fees’ decision.

    Repeat above recipe until the loathsome individual American inventor profession is essentially annihilated.

  10. angry dude August 23, 2019 12:45 pm

    The fate of all mankind I see
    Is in the hands of fools…

  11. Night Writer August 23, 2019 12:50 pm

    What do you expect from judges that were selected by SV for their irrational hatred of patents. Chen was at the PTO and was rabidly against all software patents. Reyna was completely ignorant of patent law and science, but was willing to get those patents under control in exchange for an appointment. Stoll had a reputation in DC of being cruel and a person with clear character problems.

    Etc. Each one of the judges (except O’Malley) that Obama appointed was selected by SV to burn the patent system down.

  12. Concerned August 23, 2019 1:30 pm

    Curious @8:

    Chen writes:
    We conclude that claim 1 is directed to wirelessly communicating status information about a system.
    First, I doubt that accurately characterizes the “focus of the claimed advance over the prior art.”

    The above quote is the reason why I filed documents with the USPTO showing that no end user uses my inventive steps. Time stamped with the USPTO as I suspect eventually there will be some end user or court arguing my claims were done years beforehand.

    The USPTO is already saying routine, conventional and well understood, yet the USPTO offered no proof as to who on Earth is doing the same.

    The USPTO did offer cobbled court cases that have absolutely nothing in common with tracking a parent of an adult for life and cost efficiently.

    Anybody you know that tracks the parents of adults to solve a problem of 63 years beyond the reach of experts and working professionals?

  13. Paul Cole August 23, 2019 2:13 pm

    Patented in the UK and Canada. US stands out again!

  14. angry dude August 23, 2019 3:44 pm

    PTO-Indentured @9

    “Repeat above recipe until the loathsome individual American inventor profession is essentially annihilated”

    Dude,

    There was never such a “profession” (as a way to make a living for your family), even before Ebay – more like casino with sufficiently high odds to attract individual participants who could afford to burn tens of thousands of dollars in hope of winning a big prize at the end

    Nowadays it’s just a sure way to lose your life savings and burn your investor’s money, if any

    Why not go to Vegas instead and have a really good time for yourself ?

  15. Mark Nowotarski August 23, 2019 5:08 pm

    What I got out of the decision is the the Fed Circuit has added “wireless communication” to its list of per se abstract ideas. It reminds me of their queasiness about “transient memory” and “signals”.

  16. B August 23, 2019 8:01 pm

    Judge Chen went full retard. Never go full retard.

    This whole s101 nonsense is naught more than the courts’ desire to have a capricious veto over patentability when they can’t cobble together (with a straight face) a 102, 103, and/or 112 grounds to invalidate a patent.

    Guldenaar was another retarded 101 decision where, inter alia, the CAFC was collectively too intellectually deficient to hit the “Shepards button” to figure out what Judge Giles Rich meant by “technological.” The bus to Madison Place keeps getting shorter and shorter.

    @Benny – s103? Perhaps. That would be the legit grounds, if any.

    @concerned – Your evidence will likely be ignored unless you get Judge Moore, who apparently is the only CAFC Judge smart enough to realize that “well-known, routine, and conventional” necessarily requires a comparison with the prior art. Otherwise, expect the CAFC to look the other way.

    Anyway, call me if you need to appeal to the CAFC.

  17. Concerned August 23, 2019 9:57 pm

    B:

    Thank you, so noted.

  18. Ternary August 24, 2019 3:43 am

    The Opinion in this case on page 3: “Rather than communicating
    this information over a physical signaling path, the asserted claims recite communicating it wirelessly.”

    How is it even possible that the Courts come up with this type of nonsense? What do they believe a wireless channel is: magic?

  19. Ternary August 24, 2019 7:26 am

    I have to correct myself here. It is the inventor who uses this outdated term of “physical signaling path”. And the Court merely reflects that language.

    I am still upset by the Court’s “As such, the broad concept of communicating information wirelessly, without more, is an abstract idea.” It is of course not. While the description of transmitting information is abstract (as in Shannon), the actual transmission of signals, be it over wired or wireless channels, is physical. To use the Court’s type of language is scientifically unsupported.

    I found that the Court is often triggered by claims that have a sense of indefiniteness. The 275 patent for instance uses “an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.” After reading the spec I get some sense of what is could mean, but it is unclear how I could circumvent this limitation. The patent was issued pre-Alice, but has shaky language.

    Post Alice, the Court appears to prefer invalidating the claims over Alice/101 because fuzzy reasoning is allowed, rather than dig into 112 or 103.

    I still maintain my earlier statement (slightly amended): How is it even possible that the Courts come up with this type of nonsense? What do they believe a communication channel is: magic?

  20. step back August 24, 2019 12:33 pm

    Ternary @19 asks “What do they believe a wireless channel is: magic?

    Yes. Exactly.

    Essentially all of science is “magic” and “abstractionism” to these people.
    The Supreme Court believes that isolating a DNA fragment is just like plucking a leaf of a tree. They believe that King Tut’s accountant had the ability to instantly acquire “information” from all about the realm and thus know when the kingdom was approaching insolvency. They believe that the human “mind” operates (or can operate) exactly the same way as do programmed gizmos know as “computers”.

    The present Fed. Cir. panel chooses to ignore the fact that the preamble is a limitation directed to a physical thing, namely, the garage door opener (or “barrier operator” as the lexicographers of this patent chose to phrase it). They refer to it as an abstract “system”.

    Slowly but surely, all physical things are being teleported out of our real world and into that sector of the Twilight Zone known as the Abstraction Dimension.

    https://patentu.blogspot.com/2019/08/our-disapppearing-world.html

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