Trading Technologies, ChargePoint Ask High Court for Help with Federal Circuit’s Conflicted Approach to Patent Eligibility

By Eileen McDermott & Nancy Braman
October 29, 2019

“The Judicial Branch has embarked on a crusade against certainty and breadth of eligibility stemming from a lack of perceived guidance from this Court.” – Amicus brief of US Inventor

https://depositphotos.com/5312864/stock-photo-single-hand-of-drowning-man.htmlThis article was updated on October 30 to clarify certain facts of the case in the opening paragraph. 

Trading Technologies International, Inc. (TT) has filed a second petition with the U.S. Supreme Court asking it to review a Federal Circuit holding that computer-implemented inventions that do not improve the basic functions of the computer itself are directed to abstract ideas and therefore patent ineligible. The present petition relates to U.S. Patent Nos. 7,685,055 (the “’055 patent”); 7,693,768 (the “’768 patent”); and 7,725,382 (the “’382 patent”). The ‘768 and ‘382 patents are continuations from, share the same specification as, and have claims that closely track the claims of U.S. Patent No. 6,766,304 and U.S. Patent No. 6,772,132, which were found by the CAFC in February of this year to be not subject to covered business method review (CBM) because the claims were directed to technological inventions “under any reasonable meaning of that term.”

The petition TT filed in September relates to Patent Nos. 7,533,0567,212,999, and 7,904,374. The latest petition argues that the Federal Circuit “simply declined to address conflicting Federal Circuit authority involving the same patent family or the line of other Federal Circuit decisions adopting and applying that authority’s reasoning,” and, therefore, clarification is needed from the High Court.

The company’s argument may also get a boost from another petition filed recently appealing the controversial decision in ChargePoint v. Semaconnect, in which the Federal Circuit held that a vehicle charging station was not patent eligible.

Trading Technologies Petition and Amici

Like the previous petition, the questions TT is presenting here are:

  1. Whether computer-implemented inventions that provide useful user functionality but do not improve the basic functions of the computer itself are categorically ineligible for patent protection.
  2. Whether the Court should overrule its precedents recognizing the “abstract idea” exception to patent eligibility under the Patent Act of 1952.

The arguments are also identical, focusing on the intra-circuit conflict on patent eligibility:

While one line of Federal Circuit decisions holds computer-implemented inventions to be ineligible if they do not make hardware-like improvements to computers’ basic functions, another line holds the opposite. Several decisions have even upheld patent protection for interactive graphical interfaces, in plain and open conflict with the decision below.

Namely, TT compares the line of cases beginning with Enfish, LLC v. Microsoft Corp., which has focused on the distinction between claims that “purport to improve the functioning of the computer itself” and those that are directed to the mere use of a computer to provide functionality to users, with a conflicting line of cases, such as Data Engine Technologies LLC v. Google LLCwhich the petition says “correctly recognizes that the functionality provided to users by computer-implemented inventions provides a basis for patent eligibility, irrespective of whether those inventions improve the computer’s basic functions,” TT wrote in its petition.

Additionally, the Federal Circuit case law interpreting the term “abstract idea” is what Federal Circuit Judge Plager has described as “a ‘definitional morass’ that ‘renders it near impossible to know with any certainty whether the invention is or is not patent eligible.’” In addition to Plager, former Federal Circuit Judge Paul Michel and Judge Richard Linn have lamented the impossibility of the abstract idea concept and the state of patent eligibility law today. Citing two separate IPWatchdog articles, TT’s petition recounts Judge Michel’s statements in recent years alternately referring to patent eligibility jurisprudence as being in a state of “chaos” that is “devastating American business” and observing that “with ’22 years on the Federal Circuit and nine years since dealing with patent cases,’ ‘I cannot predict in a given case whether eligibility will be found or not found.’” TT further noted that in recent cases like Aatrix Software, Inc. v. Green Shades Software, Inc., the current Federal Circuit judges have begged for guidance. In Aatrix, Lourie said, “the law needs clarification by higher authority” than the Federal Circuit.

A Judicial Crusade

Two amici have weighed in on TT’s first petition to the Supreme Court now, urging the Court to grant review. US Inventor’s brief laments the failure of the courts thus far to provide a reliable framework for assessing patent eligibility and accuses the judicial branch of embarking on a “crusade against certainty”:

The Judicial Branch has embarked on a crusade against certainty and breadth of eligibility stemming from a lack of perceived guidance from this Court. There are numerous conflicting decisions in the computer implemented patent area that cannot be reconciled. Most decisions focus on the “abstract idea” exception. The result is less certainty and less investment in the United States.

The brief goes on to argue that the petition should be granted in order to 1) reconcile the “competing and conflicting views” among the three branches of government—the USPTO, Congress and the Federal Courts; and 2) to curb harm to U.S. innovation, particularly to independent inventors.

Eschewing Alice

The brief of International Game Technology, “the world leader in gaming technology and development,” argues that the Federal Circuit has created chaos in the field of software patents and that the abstract idea exception is unworkable. Citing recent decisions such as ChargePoint, Inc. v. SemaConnect, Inc.; Chamberlain Group, Inc. v. Techtronic Indus. Co.; and American Axle & Mfg., Inc. v. Neapco Holdings LLC, the brief argues that “in a string of recent decisions, the Federal Circuit has inexplicably determined that various concrete, material objects are in fact “abstract ideas” not eligible for patent protection” and  points to the largely unprecedented “public rebuke” the American Axle decision drew from Representative Doug Collins. The brief implores the court to adopt the “practical application” approach to patent eligibility, which will at once curtail the “abstract idea” exception and avoid preemption of abstract ideas. The practical application requirement is recognized in State Street, as rooted in Diehr, and by the USPTO’s revised Section 101 guidance, says the brief, adding;

In sum, eschewing the two-step Alice test in favor of a “practical application” approach will largely reinstate the clarity of Diehr and State Street, recognizing that ideas, mathematical principles, and algorithms are patentable provided that they are (1) embodied in a practical application that is (2) new and nonobviousness. By abrogating the hostility to conceptual inventions in Bilski and the difficult two-step test in Alice in favor of a simplified “practical application” principle, all of the confusing “conventionality” inquiries of the Alice test – inquiries that have no bearing on whether a “practical application” of an abstract idea is embodied in the claims – will be transposed to the novelty and non-obviousness analysis where they belong. This restoration of the proper statutory regime of the Patent Act will enable U.S. patent law to once again respect software- based applications embodying abstract ideas.

ChargePoint Petition

On October 21, ChargePoint, Inc., represented by Supreme Court expert Carter Phillips of Sidley Austin, filed a petition for a writ of certiorari that addresses similar questions to the Trading Technologies petitions. ChargePoint is asking the Court to weigh in on:

  1. Whether a patent claim to a new and useful improvement to a machine or process may be patent eligible even when it
    “involves” or incorporates an abstract idea; and
  2. Whether the Court should reevaluate the atextual exception to 35 U.S.C. §101.

In early 2019, the Federal Circuit broadly interpreted Section 101 in ChargePoint v. SemaConnect. In reviewing the claimed vehicle charging apparatus, the court found the invention to be ineligible for a patent because, in the view of the CAFC, it was an abstract idea. The court held 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.”

The petition rests on two arguments. First, ChargePoint argues that certiorari is warranted because the CAFC’s decision conflicts with Diamond v. Diehr. In this case, the CAFC held that the patents were not valid because the face of the claims involve the abstract idea of communication over a network, even though the claims are directed at charging stations for electric vehicles with network functionality. Yet in Diehr, the patentee claimed a rubber curing process with one of the steps including an abstract mathematical algorithm, and the Supreme Court nonetheless found the claims patent eligible. According to the Court, the claims as a whole simply incorporated an abstract idea, a mathematical formula, and were not aimed at patenting the mathematical formula itself. ChargePoint also argues that the Court also reaffirmed this decision in Alice Corp. v. CLS Bank Intern., by drawing a dividing line between claims of abstract ideas and claims that only incorporate abstract ideas.

Second, ChargePoint argues that the Court must reconsider the implicit non-statutory exception to Section 101, arguing that today the federal courts are invalidating patents at break-neck speed outside of the scope of Congressional intent. ChargePoint contends that the CAFC itself admitted that it invented a new and useful improvement of a machine in line with Section 101, and therefore the Federal Circuit’s decision is not based in law. ChargePoint cites the dissent in the recently decided case of Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, which explains that Congress amended the Patent Act after WWII “to replace the ill-defined and judicially-created invention requirement with the more workable anticipation and obviousness tests codified in §102 and §103.” ChargePoint asserts that the Court never implemented the amendment, however, continuing to apply “the discredited, judge-made ‘invention requirement’ under the new name of inventive concept.” Regarding its patents, ChargePoint stands firm that even with judicially-created requirements, there is no warrant in the lawful statutory text to deny its rights to patents as granted by Congress.

Patent invalidation by the federal courts and the Patent Trial and Appeal Board (PTAB) has gone up by 914% after Alice, says the petition, with the CAFC’s Section 101 jurisprudence now comprising 156 cases compared with 19 on the day of the Alice decision. In a last attempt to sway the Court, ChargePoint argues that the warning issued by the Court in Alice, “to tread carefully in construing the exclusionary principle that laws of nature, natural phenomena, and abstract ideas are not patentable, because otherwise the principal might swallow all of patent law,” has now become a reality, and is therefore desperately in need of review.

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Copyright: Andrey_Kuzmin 

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.

Eileen McDermott

Nancy Braman is a freelance legal researcher for IPWatchdog. She is also a U.S. Registered Patent Agent and a 2L at the University of New Hampshire Franklin Pierce School of Law, where she serves as the Communications Director of the UNH Patent Law Forum. Her research background in Molecular and Microbiology brings her to the realm of patent law, and in her spare time, she also works as an Alaska commercial sockeye fisherman.

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 19 Comments comments. Join the discussion.

  1. Pro Say October 29, 2019 6:37 pm

    Indeed, not only has the judiciary not tread lightly, they have in fact stomped the life out of a wide — and growing — swath of American innovation.

    Congress: Where are you? What are you waiting for? When is this going to end?

  2. Concerned October 29, 2019 8:11 pm

    I definitely have interest in this matter.

    My examiner insists that the computer hardware has to be improved. And perhaps that view may be correct if the collected data was not solving a long standing problem or delivering a practical and improved application of the collected data. Therefore, as a last resort, did the computer hardware get improved as nothing else improved in the process?

    However, improving the computer hardware is not the only mandated view of patentability, that would be illogical on the surface. The statute, SCOTUS case law and the USPTO 2019 guidance all state a new and useful process (silent on computer hardware) can be patentable even with an abstract idea. What is being solved, what is being improved with the collection of data?

    Is a patent application just collecting data on how many red cars exist for example? No patent. Or hypothetically is the patent application collecting data on how many red cars exists, that red cars cause 90% of all accidents, and by applying a special named ingredient to the red paint, the accident rate on these red cars falls to 2%? The collected data and special ingredient delivered a practical and improved application. Patentable.

    Likewise, my application collects data to track the parent of an adult to solve a long time problem beyond the reach of experts and working professionals for decades. The inventive step is not the collection of data, it is the tracking of the parent of an adult. The examiner readily admits a problem was solved (that the official record shows was a long standing problem for decades). So is the examiner more concern about form over solution and why?

    SCOTUS needs to get this problem solved, not only for practical and obvious reasons, but also for the reason I think examiners are using the computer hardware “sole eligibility” as quick and illogical rejection.

  3. Ternary October 29, 2019 10:39 pm

    Absolutely Pro Say. Why is Congress letting this issue fester? Reasonable proposals have been made, to the dissatisfaction of certain interest groups who seem to benefit from the current chaos. It feels like interest groups are holding up Congressional action, waiting for an opportunity before SCOTUS to further weaken the patent system.

    Rather than addressing eligibility, we are back to patent quality in Congress. It is like a broken record. My suspicion is that anti-patenters are waiting for the right case to come before the Supreme Court to drive a final stake through the heart of computer implemented inventions while making medical diagnostic inventions eligible. (like Alice was a close to perfect case related to eligibility). That will pacify the medical industry, relieving pressure on Congress.

    It feels like the Courts really want to ban software-type patents as being not patent eligible, but are afraid to say so and need cover from SCOTUS who also has been hesitant. Watching the current mess and their unwillingness to reverse, SCOTUS may be ready to take the final step and declare all computer implemented inventions that do not improve the working of the machine (whatever that means, because it is the software that largely determines the working of the machine) as patent ineligible. They will defend such a decision as providing much needed clarity in the patent system because Congress is unable/unwilling to do so and the system has become unworkable.

    Just a wild thought that occurred to me while reading this and other recent articles and comments. It could never happen like that, of course.

  4. concerned October 30, 2019 12:23 am

    Ternary:

    I agree with your points.

    Alice seemed like the perfect case for SCOTUS from the standpoint of killing eligibility on solutions already known before computers, then simply transferring that known solution from pencil and paper to a computer.

    The consideration that pencil and paper could solve the problem should not be the issue (another examiner favorite), the controlling fact should be was a problem solved that was a long standing issue before and/or after the invention of computers. Immediate settlement (Alice ) was in use for over 100 years when the Alice ruling was declared. Was any problem solved when the Alice claims were placed on a computer that existed during that 100 year pen and paper period?

    A doctors office scheduled appointments for years by simply penciling in the person’s name on a calendar’s date and time slot. Doing the same now with a computer does not solve any known problem. But suppose someone invented a computer scheduling system for a doctor’s office that “magically” told the office staff that a patient would miss their appointment 4 month’s in advance of that date, therefore, schedule another client ahead of time? What doctor’s office would not want that invention? Why would any patent system discourage this type of invention regardless if a computer was used and that hardware was not improved? Perhaps the preceding possibilities is what refrained SCOTUS from outright barring all software arts from eligibility.

    And of course, the above invention would need priced right or the old scheduling method just continues as cheaper (another myth advanced by the anti-patent group regarding so-called bad patents= bad patents allegedly cause harm.)

    I do not like judicial exceptions or legislating from the bench. My application still survives Alice if the lower courts would apply Alice strictly, however, the lower courts add their own judicial exceptions to the in-placed SCOTUS judicial exceptions.

    Why has SCOTUS not smacked down the lower courts for expanding SCOTUS’ own expanded ruling like a parent who smacks down a child with “Do as I say, not as I do?” All the reasons you stated would be a good starting explanation unfortunately.

  5. Night Writer October 30, 2019 4:30 am

    It is incredible that we live in the information age and yet inventions that process information are being excluded as ineligible.

  6. Anon October 30, 2019 10:43 am

    The “insistence” that the computer qua computer “must be improved” shows a fundamental misunderstanding of the very nature of software as a machine component and mere design choice of “wares” (e.g., hardware, firmware, software).

    It is a canard to think of software as “just instructions” — along the lines of “mere books” or other “mere writings.”

    Patent law has a well established view of “just writings,” and software most definitely fits into the known exceptions of printed matter.

  7. TFCFM October 30, 2019 12:07 pm

    From the article: “ChargePoint argues that the warning issued by the Court in Alice, “to tread carefully in construing the exclusionary principle that laws of nature, natural phenomena, and abstract ideas are not patentable, because otherwise the principal might swallow all of patent law,” has now become a reality…

    That argument should certainly be convincing — at least, if the Court is willing to ignore the roughly 1.5 million patents that have been issued since the Supreme Court’s Alice decision was handed down.

    (Once again, I admire the petitioner’s ability to find clients stoopid enough to pay them for making such pathetic “arguments.”)

  8. Concerned October 30, 2019 1:01 pm

    TFCFM:

    I do not find such questions stupid.

    I personally would love the answer to the question “Does the computer implemented invention have to improve the computers hardware?”

    It’s a fair question especially in situations where all parties concede that a long standing problem was solved and the solution was the direct result of human hands.

    The mandate that the hardware shall be improved is a lower court judicial expectation from a SCOTUS judical exception regarding inventive step.

  9. B October 30, 2019 1:46 pm

    Here’s a hint to the idiot judges and justices who think software can proves a computer’s “basic functions.” No software improves a computer’s basic functions. It’s an idiot myth jurist tell themselves to feel intelligent and informed.

  10. B October 30, 2019 1:51 pm

    @ concerned “My examiner insists that the computer hardware has to be improved.

    Ask your examiner to explain McRo v Bandai.

  11. B October 30, 2019 1:52 pm

    Improve, not “proves”

  12. B October 30, 2019 2:08 pm

    @ TFCFM “(Once again, I admire the petitioner’s ability to find clients stoopid enough to pay them for making such pathetic “arguments.”)”

    Certainly, no one ever paid you a penny for your knowledge of patents, fake attorney. However, now that you’re spewing your nonsense about a Trading Technologies case, go ahead and tell us why the two TT cases came out completely opposite.

  13. Ternary October 30, 2019 3:42 pm

    B. It depends on what you consider to be a computer’s basic function. A computer without software or a program really doesn’t do much. For those old enough to have worked with for instance the PDP 6, switching on the machine only activated control lights and enabled to set switches. Nothing else happened. To get the machine to act as a computer you had to bootstrap it: 1) with manual switches enable the computer to input data from a punchtape reader; 2) read the punchtape, which had a program to load and execute data from a tape-reel, 3) the tape-reel had an operating system program that allowed to finally; 4) input data from a keyboard.

    Going deeper into the guts of a computer, one has a set of basic instructions (primitive functions) that can be combined into a routine. For instance one may have series of XOR and AND devices that are addressed with micro-instructions. One can combine these into a Carry Ripple Adder which may be slow or rearrange the instructions to perform a Carry Look Ahead Adder which may be faster.

    Certain sorting algorithms finish searching a database faster than others. Certain scheduling software allows a processor to multi-task, making it appear that different applications are running at the same time.

    Diffie-Hellman (DH) key exchange allows forming a cryptographic key between two computers by exchanging data over an insecure channel. DH depends on machine exponentiation operations. One can speed-up the DH exponentiation (and RSA exponentiation) by repeated square-and-multiply programs, which clearly improves the performance of the computer.

    A digital filter may be a programmed calculating machine that processes signals within the constraints of the sampling theorem. It does something that a human can not do. It performs calculations in an extremely short time and converts the results in a signal.

    Again, it all comes down what one defines as a computer basic function. The most basic function is to perform a binary switch like an XOR, an AND or NAND switch. And you can improve that by going to multi-valued switches. But that is not what is meant by “basic function.” What is generally used as “basic function” by Examiners and Courts is the arbitrary: storing, searching, retrieving and processing of information. But this definition of “basic function” of a computer is as useless and arbitrary as: a basic function of a pharmaceutical drug is to cure a disease. How do you improve the basic function of a pharmaceutical drug? You generally don’t: you improve or invent a drug to address a specific disease.

    It comes back to what Anon, NW and others have said repeatedly: “The “insistence” that the computer qua computer “must be improved” shows a fundamental misunderstanding of the very nature of software as a machine component.”

  14. Anon October 30, 2019 3:43 pm

    TFCFM,

    Your message again obscures the issue.

    Here, “at least, if the Court is willing to ignore the roughly 1.5 million patents that have been issued since the Supreme Court’s Alice decision was handed down.” confuses and conflates patent grants with enforceable patent rights.

    Think “Cleveland Clinic” as one example of a patent in those roughly 1.5 million patent grants that explicitly followed the (pre January 2019) Office eligibility guidance in order to obtain grant, but was nonetheless thrown out as ineligible by the courts when attempted to be enforced.

    One of the issues for you to think about (and I won’t expect engagement, well, because you are you) is that the mere granting of patents — at the same time providing a post grant mechanism that substantially eliminates those grants (and does so with NO truly effective feedback mechanism into the granting process – as most any real world product warranty program would do) is simply NOT providing the point that you think “gee patent grants are a plenty” provides.

    Your mere labelling as “pathetic” or intimating clients are “stooped” is rather baseless ad hominem.

    Concerned @ 8,

    The computer system in Diehr was not “physically” improved at the hardware level (as that term is being used – and this caveat is necessary given my post at 6, since most all computer systems are necessarily</I more than merely hardware — leastwise in this day and age).

  15. Concerned October 30, 2019 4:07 pm

    B@10:

    The examiner would give me the lip (sync) service! lol.

  16. Concerned October 30, 2019 4:32 pm

    Anon@14: Great point about Diehl.
    How will this “Knot” ever get cut as you often ask?

    What a mess. The judicial exceptions are like the game “rumor” where child “A” tells child “B” a story, then B tells C, etc. After 12 different repeats of the story, the end story version is not recognized from the original story.

    Judical exception on a judicial exception of a judicial exception on the third cousin of a mother’s brother’s second wife’s sister in law’s nephew. About as clear and understandable as the current jurisprudence.

  17. B October 31, 2019 2:00 am

    @ concerned “The judicial exceptions are like the game “rumor” where child “A” tells child “B” a story, then B tells C, etc. After 12 different repeats of the story . . . ”

    No. This implies that the Federal Circuit is attempting to get it right

  18. Anon October 31, 2019 7:47 am

    B @ 17;

    Ouch. Sadly, even the writings of the CAFC appear to support your view that “getting it right” is NOT so much the aim as is “legislating from the bench.”

    Policy and “wanting to reach a desired Ends no matter the Means” are evident drivers in the panel decisions (and en banc “non-decisions”).

    Of course, as I have noted, when you put statutory law through the process of re-writing by Common Law AND you have such “Ends-driven” motives split upon different Ends, you have the situation in which the Gordian Knot first created by the Supreme Court attracts more and more rope, creating an ever bigger knot.

    This too is one reason why EVERY branch of the government has criticized the Gordian Knot of inconsistent case law on eligibility.

    And yet still we have people refusing to understand that the score board is broken, and that the fact that the score board is broken IS the underlying issue to the morass of eligibility law that we have today.

    In many “twelve step” programs, what is the first step?

  19. Concerned October 31, 2019 9:45 am

    Anon:

    Definitely the parties are not in Egypt, they are in the Nile.

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