Supreme Court Denies Trading Technologies, ChargePoint Petitions

By Eileen McDermott
January 27, 2020

“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…. If claim 1 is not a machine, I don’t know what is.” – Russell Slifer, writing on ChargePoint case

denied - https://depositphotos.com/4540592/stock-photo-denied-rubber-stamp.htmlThe U.S. Supreme Court today denied two petitions for certiorari filed by Trading Technologies and one by ChargePoint, Inc. asking the Court to review their cases related to the patent eligibility of their inventions. Trading Technologies’ inventions relate to graphical user interface tools, while ChargePoint’s invention is for a vehicle charging station.

Conflicting Precedent

Trading Technologies’ October 2019 petition (19-522) asked: 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,” and 2) whether the Court should overrule its “abstract idea” exception to patent eligibility.

The case involved 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 2019 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.”

Trading Technologies further argued to the Supreme Court that “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.”

The questions presented in the company’s earlier petition (19-353) were identical.

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Patent Law Swallowed

On October 21, ChargePoint, Inc., asked the Court to address the following:

  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, in reviewing the claimed vehicle charging apparatus, found the invention to be ineligible for a patent because 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.”

ChargePoint argued in its petition that certiorari was warranted because the CAFC’s decision in its case conflicted with Diamond v. Diehr. 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 further argued that the Court must reconsider the implicit non-statutory exception to Section 101 to curb the federal courts’ invalidation of patents “at break-neck speed,” outside of the scope of Congressional intent.

Russell Slifer, 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, writing on the ChargePoint case after the Federal Circuit’s ruling, argued that “the ChargePoint decision was the very case that the Supreme Court in Alice Corp. v. CLS Bank warned would swallow all of patent law,” and that it effectively overruled and made moot the USPTO’s 2019 patent eligibility guidance.

Slifer further lamented the Chargepoint court’s contention that the claim language preempted the industry’s ability to use networked charging stations:

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.

Hope Wanes

The denials are not surprising following the High Court’s refusal to allow a number of other petitions dealing with Section 101 earlier this month, including Athena Diagnostics v. Mayo Collaborative Services and HP Inc. v. Berkheimer. Athena was thought to have the best chance of being granted, especially after the United States Office of the Solicitor General (SG) in December weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

According to PatentlyO’s Dennis Crouch, there are now only a few other patent petitions remaining on the Supreme Court’s docket. Thryv v. Click-to-Call was argued in December and is awaiting a decision. That case asks whether 35 U.S.C. § 314(d)— which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable—permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b), which states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition.

With little hope now remaining for assistance from the Supreme Court on patent eligibility law, the ball seems to be in Congress’ court. However, Congress is said to be stalled for the time being on Section 101 reform, and instead appears to be focusing more on copyright issues so far this term.

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Image ID: 4540592
Copyright: Rangizzz 

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments.

  1. Concerned January 27, 2020 6:38 pm

    Here is the answer I was seeking about the Trading Tech cert status the last couple of weeks.

    SCOTUS absolutely had a responsibility to answer the Trading Tech question as to whether the computer implement process HAD to improve the hardware.

    Both USPTO and SCOTUS have said any new and useful process is patentable even if it uses an abstract concept. Yet CAFC is all over the place and SCOTUS refuses to clean up the mess.

  2. Pro Say January 27, 2020 9:33 pm

    Translation: “Ooops, sorry. We know now that we made a couple of terrible, unconstitutional mistakes (Mayo and Alice); but no — we’re not willing to own up to them and make what we’ve made so wrong . . . right.”

    “Instead, we’re going to punt the ball over to Congress to fix.”

    Congress: The eligibility ball is now firmly in your hands.

    Are you going to restore American innovation leadership in ALL fields?

    Well; are you?

  3. TFCFM January 28, 2020 10:00 am

    Yawn.

    Old structure + abstract idea =/= eligible subject matter.

  4. Anon January 28, 2020 11:33 am

    TFCFM,

    Yawn right back at your lack of grasp of the intrusion of the legislating from the bench and peddling of tripe that merely reflects that same lack of grasp of the underlying issues.

  5. BP January 28, 2020 11:49 am

    The SCt/Fed Cir cabal: “We are too technologically ignorant and too lazy to analyze under 102 or 103 when 101 is so easy and useful to dismiss a complaint under Federal Rule of Civil Procedure 12(b)(6). Our decisions aim to send a chill that lets people know we care little to nothing about technology. OK, let’s move on to mythology, I mean ‘religious freedom’ or what used to be erroneously called ‘freedom from religion’ (i.e., freedom from dogma)”.

  6. Jam January 28, 2020 1:11 pm

    TFCFM @ 3

    By that logic, no patent should ever have been granted.

    E.g. 1, Google’s original page rank patent 7058628 is simply the abstract idea of ranking documents based on the links between documents, just like what has been done in case law for centuries (i.e., cases citing other cases, highly cited cases being scored higher in the mind of the researcher). The only difference being that US patent 7058628 is implemented in a computer. Thus, Google is founded on, and started making their billions by, excluding others (e.g., Yahoo) from using an abstract idea by your logic.

    E.g. 2, US patent 10000101 “Machine for fitting and removing a tyre [sic] and method for operating the machine”. What a tyre is and that a tyre can be removed are constructs of the human mind and imagination and, as such, are nothing more than mere abstract ideas. Hence, this patent is nothing more than a collection of old structures being used to perform the abstract idea of tyre removal.

    The contention that, if an application/patent can be handwaved down to old structures plus an abstract idea, then the application/patent is ineligible is, quite simply, fallacious. Anything can be hand waved down to old structures plus an abstract idea (or natural law).

    Rather, 101 appears to be little more than a tool for the courts lighten their dockets by dismissing patents regardless of the facts, devoid of logic, and bereft of principles.

  7. Anon January 28, 2020 1:59 pm

    To feed on Jam’s point, ALL patenting in any of the ‘hard goods’ statutory categories is nothing more than reconfigurations of known basic particles (i.e., protons, neutrons and electrons) and doing so purely based on the “laws of nature.’

    As TFCFM (also) as of yet has not defined ‘abstract,’ his parroting of Supreme Court nonsense is merely that: parroting of Supreme Court nonsense.

  8. angry dude January 28, 2020 7:51 pm

    Long story short: to the morgue

  9. Concerned January 29, 2020 6:54 am

    Unfortunately Angry Dude may be correct in his assessment. If CAFC can rule any way they choose, including both ways, and SCOTUS refuses to correct them, what is the recourse?

    Congress? And when?

    What a lawless process!

  10. TFCFM January 29, 2020 9:59 am

    Jam@#6: “By that logic, no patent should ever have been granted.

    That there may be ‘close’ calls does not mean that there may be no calls. A tangible composition of matter is plainly patent eligible. A claim that recites merely shuffling information “on a tangible computer” is, without more, clearly not.

    That the legislature, courts, and practitioners may be struggling to define the precise contours of ‘abstractness’ in the context of the current version of 101 does not detract from the obvious-to-anyone-having-a-whit-of-common-sense abstractness of the claims in the cases for which cert was denied.

    (Trivially, the continued issue by the Patent Office and enforcement by the courts of numerous patents puts the lie to your assertion.)

  11. Curious January 29, 2020 10:48 am

    As TFCFM (also) as of yet has not defined ‘abstract,’ his parroting of Supreme Court nonsense is merely that: parroting of Supreme Court nonsense.
    I was tempted to write something in response to TFCFM, but as I read this comment, I deemed adding anything else would be superfluous.

  12. Anon January 29, 2020 11:51 am

    TFCFM: “ A tangible composition of matter is plainly patent eligible.

    You my friend have not been paying attention.

    Law does NOT operate by your notion of ‘common sense.’ The mess of 101 should provide ample reasons why not.

    Curious, I hear you – and yet the parror keeps squawking… 😉

  13. Anon January 29, 2020 11:57 am

    … and “(Trivially, the continued issue by the Patent Office and enforcement by the courts of numerous patents puts the lie to your assertion.)

    is rather opposite of the situation. Note please TFCFM, that the premise of the assertion is NOT what is currently going on, but rather, what should be going on IF a certain proposed position were held to be universally applied.

    The fact of the matter is that such a universal application would only emphasize the absolute MESS created by the Supreme Court.

    First step: realize just who has created the problem.

    My friend TFCFM, you are not there yet.

  14. Curious January 29, 2020 3:28 pm

    That the legislature, courts, and practitioners may be struggling to define the precise contours of ‘abstractness’ in the context of the current version of 101 does not detract from the obvious-to-anyone-having-a-whit-of-common-sense abstractness of the claims in the cases for which cert was denied.
    Here are claims 1 & 2 of the 8,838,715 (i.e., the ChargePoint patent):
    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.
    2. The apparatus of claim 1, further comprising an electrical coupler to make a connection with an electric vehicle, wherein the control device is to turn electric supply on and off by switching the electric coupler on and off.

    Obvious-to-anyone-having-a-whit-of-common-sense that this claim is abstract? Up until Alice, I doubt that even the most fervent anti-patent advocate would have made an argument before a court that this was an “abstract idea” for fear of being sanctioned.

    Does this claim represent a “scientific truth, or the mathematical expression of it”?
    Does this claim represent a “a fundamental truth; an original cause; a motive”?
    Does this claim represent one of the “the basic tools of scientific and technological work”?
    Does this claim represent “a fundamental economic practice long prevalent in our system of commerce”?

    This is the terminology that the Supreme Court has used in characterizing certain inventions as being directed to abstract ideas. However, they also stated “At some level, ‘all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ … [t]hus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.” This is essentially an admission that if you squint hard enough at a claim, you can find something abstract about it. However, the Supreme Court also stated that “we must distinguish between patents that claim the ‘ ‘buildin[g] block[s]’ ‘ of human ingenuity and those that integrate the building blocks into something more … thereby ‘transform[ing]’ them into a patent-eligible invention.”

    Can anybody seriously make an argument that the claims of the ChargePoint patent are directed to anything close to building blocks of human ingenuity? Such an argument would be farcical on its face, yet this was swallowed hook, line, and sinker by Prost, Reyna, and Taranto, who were on the ChargePoint panel. One would have to a hard time finding a more anti-patent panel than those three. Of the active judges, you might swap out Taranto for Dyk or Wallach. That being said, Taranto has come out on the correct side on certain procedural issues regarding summary judgement/12b6 (i.e., Berkheimer, Aatrix, Cellspin), so I’ll give him credit for that.

    This brings me to my last point (for now), which is that decisions at the Federal Circuit aren’t based upon the “law.” Rather, they are panel dependent. Tell me the panel, and I’ll tell you (with considerable certainty) whether the patentee got screwed or not (the default at the Federal Circuit being that the patentee got screwed).

  15. TFCFM January 30, 2020 11:06 am

    Claim 1 of ‘715 is directed to an apparatus that has three parts:

    1) a “control device”
    2) a “transceiver” and
    3) a “controller.”

    Each of these three is not a specific thing, but merely a functional description of a class of (nearly innumerable possible) things. Each is freely interchangeable with the phrase “anything that” (coupled with changing the infinitive form of the associated verb to the third-person-singular form of the same verb).

    There could not be a clearer example of purely abstract, “anything-that-performs-the-function-I-want” claiming. Claim 2 does not decrease abstractness by adding a fourth “anything that makes a connection….” phrase.

    More to the point, the “anything that” terms that I propose should more fully read “anything (whether I have disclosed — or even conceived of — it or not, and regardless of whether it is old, invented by me now, or invented by others in the future) that…”

  16. Anon January 30, 2020 12:52 pm

    Each of these three is not a specific thing, but merely a functional description of a class of (nearly innumerable possible) things

    Please stay away from things (like patent law) that you do not understand.

  17. Curious January 31, 2020 12:48 am

    Each of these three is not a specific thing, but merely a functional description of a class of (nearly innumerable possible) things.
    Seriously, you don’t write claims for a living, do you?

    What is claimed is:
    1. An apparatus, comprising:
    a light,
    a voltage supply,
    a switch disposed between the light and voltage supply to regulate electricity from the voltage supply to the light, and
    a container in which the light, voltage supply and switch is contained.

    I’ve essentially claimed a flashlight using structural terminology that is almost entirely functional in nature. Is this directed to an abstract idea? Even the term “flashlight” itself is functional in nature as it describes something that flashes light.

    Each of these three is not a specific thing
    Apparently you did not read that claim language is inherently abstract as it claims things as classes of things — not as specific objects.

    Consider claim 1 from U.S. Patent 10,000,000. I picked that patent because the USPTO likes to have their ’round number’ patents to be special:
    1. A laser detection and ranging (LADAR) system, comprising: a two-dimensional array of detector elements, each detector element within the array including: a photosensitive region configured to receive return light reflected from a target and oscillating local light from a local light source, and local processing circuitry coupled to an output of the respective photosensitive region and configured to receive an analog signal on the output and to sample the analog signal a plurality of times during each sample period clock cycle to obtain a plurality of components for a sample during each sample period clock cycle; a data bus coupled to one or more outputs of each of the detector elements and configured to receive the plurality of sample components from each of the detector elements for each sample period clock cycle; and a processor coupled to the data bus and configured to receive, from the data bus, the plurality of sample components from each of the detector elements for each sample period clock cycle and to determine an amplitude and a phase for an interfering frequency corresponding to interference between the return light and the oscillating local light using the plurality of sample components.

    Detector elements.
    Photosensitive region.
    Local processing circuitry.
    Data bus.

    This claim is replete with functional language. What are the specific elements being claimed?

    While I’m thinking about it, how about you give us an example of a claim directed to some type of mechanical/electrical device that you believe does not employ functional language and recites “specific elements.” You’ve got over 10,000,000 patents to choose from.

  18. TFCFM February 3, 2020 11:13 am

    Curious: “I’ve essentially claimed a flashlight using structural terminology that is almost entirely functional.

    You’ve written a claim, using functional language, that no examiner having undergone even initial training would allow:

    – Depending on what you’ve disclosed regarding “voltage sources,” it’s exceedingly unlikely that an examiner will allow a claim that addresses everything from batteries to nuclear power plants to fuel cells to kites-in-lightning-storms.” Whether the examiner rejects the claim under 112 or 101 or both (ignoring prior art rejections, which I presume are not your point) is a mere matter of conjecture: both are applicable.

    – Assuming you substituted “voltage-actuatable light source” in place of “light,” you are likely correct that an examiner would find that the term is sufficiently well-understood to be considered non-abstract. The claim may not, of course, encompass fluorescent of phosphorescent chemicals, unaffected by voltage (assuming, of course, that what you’ve disclosed is some sort of electrically-operated flashlight).

    – “Operably connected” appears to suffer the same shortcoming as “voltage source;” reciting a “voltage source” in a 112-/101-compliant manner would likely render this moot (because once a PHOSITA understands what you mean by “voltage source,” he’ll also understand how to connect it with a voltage-actuated light source.”

    At bottom, it seems to me, you confuse the fact that it is permissible to use in a claim English-language words which have functional meaning from the prohibition, under the patent statute, of abstractly-describing what the claimed invention is.

    The terms you used nearly-acceptably in your flashlight claim have relatively straight-forward, well-understood meanings (at least insofar as you thought you were reciting a battery and a light bulb electrically coupled by way of a switch). A garage door “operably coupled with a controller which communicates with a control device by way of a transceiver” could be nearly anything — it does not have a straight-forward, well-understood meaning (other than being a pathetically written claim drafted by a patentee attempting to claim more than he invented).