Consumer 2.0 v. Tenant: CAFC Skirts Another 101 Analysis with Rule 36

“The case is further evidence that ‘Section 101 has devolved into a Section 103 analysis without any of the protections of Section 103 – e.g., the rule against using hindsight, needing a motivation to combine art, and secondary considerations, such as commercial success.’” – Rently counsel Rudy Telscher

https://depositphotos.com/10170230/stock-photo-dead-end.htmlLast week, the U.S. Court of Appeals for the Federal Circuit issued a Rule 36 judgment in a patent eligibility case, Consumer 2.0, Inc. v. Tenant Turner, Inc., No. 19-1846 (Fed. Cir. 2020). The ruling affirmed the findings of the U.S. District Court for the Eastern District of Virginia that the claims of a patent for a “method employing a combination of hardware and software for secure, automated entry of real property” were invalid for being directed to an abstract idea and, thus, were ineligible for patent protection under 35 U.S.C. § 101. The patented method essentially allows a user to enter a “durational” – rather than static – code on a lockbox in order to view a rental property without a realtor being present.

District Court Proceedings and Patent

In July 2018, Consumer 2.0, Inc., d/b/a Rently, filed a complaint alleging infringement of U.S. Patent No. 9,875,590 (the ‘590 patent) against Tenant Turner, Inc (Tenant). The following month, Tenant filed a Motion to Dismiss, asserting that the ‘590 patent claims were patent ineligible under 35 U.S.C. § 101. The district court held that the asserted claims of the ‘590 patent were invalid as being directed to an abstract idea. In response, Rently filed a Motion for Leave to file an amended complaint and a Motion to Alter or Amend the Judgment. The district court denied both of Rently’s motions, stating that “allowing the Proposed Amended Complaint would be futile insofar as it would not survive a motion to dismiss for patent ineligibility under step two of Alice.” Rently appealed to the Federal Circuit, ultimately resulting in the Rule 36 judgment affirming the district court holdings.

The ‘590 patent is titled Automated Entry and claims a method employing a combination of hardware and software for secure, automated entry of real property. The district court applied the two-step framework as set forth by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories. Inc. 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS Bank Int’l. 134 S. Ct. 2347 (2014).  In assessing whether the asserted claims of the ‘590 patent describe a patent-ineligible concept in accordance with the first step of the framework, the district court found that the claims were directed to an abstract idea since the “claims use generic computing devices and techniques to provide automated entry to a property without human interaction.”

Moving on to the second step of the framework, the court considered whether the claims contained “an inventive concept” to “transform the nature of the claim into a patent-eligible application.” Concluding that they did not, the court reasoned that the claims included pre-existing and generic components “arranged in a conventional manner to execute the undoubtedly conventional functions of identity verification, time-sensitive code-generation, remote automated access, information collection and display, and the use of database tables.”

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Rently Asks for Review

In its brief on appeal to the Federal Circuit, Rently argued that the district court misunderstood the patented invention and the prosecution leading to the issuance of the asserted claims. In particular, Rently asserted that the court erroneously determined that the asserted claims of the ‘590 patent recited a generic lock box, rather than a “technology-enabled” lock box capable of recognizing “automated entry information.” Further, Rently argued that the claim 7 limitation “upon the visitor providing the code information to the lock box or automated door lock within the specified period of time, the lock box or automated door lock opening to facilitate automated entry to the property” was sufficient to establish that the lock box was “technology-enabled.” Rently further argued that the district court failed to consider that the asserted claims overcame a patent examiner’s initial Section 101 rejection with amendments reciting a specific implementation of hardware and software components.

The brief also said that “the district court’s misunderstanding, overgeneralization, and oversimplification of the asserted claim infected the entirety of its §101 analysis under Alice steps one and two.” Rently asserted that the district court’s analysis confused patent eligibility with obviousness when concluding that no “inventive concept” existed based on a finding that a prior art “server could have been integrated with an application interface like Rently’s ‘automated entry’, or a server could have been integrated with a portable device and lock box.” As a result of this misapplication, Rently argued, the actual inventive concepts of the asserted patents were significantly downplayed or ignored. Rently concluded by requesting that the Federal Circuit reverse and remand the case.

Tenant’s Reply

Tenant’s reply brief reiterated the District Court’s holding that the ‘590 Patent was directed to an abstract idea, with highly general claims that did not contain “elements sufficient to transform the abstract nature of the claims into patent-eligible subject matter.” Tenant noted that the words “technology-enabled” did not appear in the asserted claims or specification and Rently’s reliance on the claim 7 limitation was insufficient because the ‘590 Patent did not disclose or suggest any specialized lock box. Tenant further agreed with the district court’s application of the two-step framework, stating that “there is simply nothing in the asserted [claims] remotely suggesting that the ‘590 patent is directed to any improvement in computer technology or computer science” and “all that is claimed is an unpatentable method of organizing human activity claimed at the highest possible coherent level of abstraction.”

In response, Rently noted that Tenant did not address Rently’s allegations, but rather “over-generalize[d] the invention, ignore[d] the combination of elements in claim 7 and the description of those elements in the specification and file history, and label[ed] the lock box ‘conventional’, despite supported allegation[s] to the contrary.”

The Arguments Never Addressed

During oral argument, Rently’s counsel, Rudy Telscher of Husch Blackwell, explained: “This [case] is really important – our client invested in the patent system, had an examiner look at this patent and agreed it passed 102, passed 103, passed 112 and passed 101…. This is a real invention.”

Telscher added that Rently’s concern now is that companies like Zillow are beginning to use the technology, and pointed to Federal Circuit cases like Enfish and McRO to bolster its position. Telscher said the district court failed to resolve factual issues of claim construction, and that Federal Circuit precedent requires reversal and remand for further proceedings.

Judge Raymond Chen seemed particularly focused on the specification and claim language, which he felt did not capture the lockbox element of the invention. “If you invented a smart lockbox why aren’t we talking about that rather than the method claim?” Chen asked.

Telscher said that Rently’s business is the overall method. “The paradigm shift is that the computer generates a code, the user can go to the lockbox and enter a code. All that Alice requires is that we have specific steps that define our method.”

In its reply brief to the Court, Rently had addressed these gaps in the specification, which it said were permitted under Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128-30 (Fed. Cir. 2018).

A Devolution

Lamenting the Rule 36 judgment, Telscher told IPWatchdog that the case is further evidence that “Section 101 has devolved into a Section 103 analysis without any of the protections of Section 103 – e.g., the rule against using hindsight, needing a motivation to combine art, and secondary considerations, such as commercial success.”

Telscher continued:

Here, it was undisputed how the real estate industry operated to show homes for many decades. It was undisputed that Consumer 2.0 developed a specific method that utilized technology to revolutionize how real estate is shown – in a way to eliminate the need for the real estate agent to be present when showing a property. When introduced in 2014 and for several years thereafter, the industry scoffed at the new approach. Here, the Complaint, patent and claims set forth the specific method and how it was unconventional, yet the district court summarily found the subject matter not patentable, resolving claim construction and fact disputes against Consumer 2.0 at the pleading stage, in contravention of well-established law.

The Federal Circuit chose not to address the difficult issues, instead issuing a Rule 36 affirmance. The rulings at both the district court and Federal Circuit are disappointing because it simply disregarded the patent office’s express determination that the claims were patentable under Section 101.

Earlier today, Retired Federal Circuit Chief Judge Paul Michel told Virtual Patent Masters attendees that Rule 36 judgments have exacerbated the patent system’s many problems. Almost half of patent cases are decided via Rule 36 in the face of the Court’s increased case load since the America Invents Act.

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

Rebecca Tapscott

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 7 Comments comments.

  1. Paul Cole March 17, 2020 5:58 am

    Very sadly, I can completely understand both why the Federal Circuit upheld the decision of the Virginia district court and why the panel considered that a Rule 36 determination would suffice. You only have to look at the description and drawings of the patent to see why that conclusion is justified, and these are not rescued by the claims. Overall, the disclosure is that of a design brief, not that of a system that was developed and tested. Anyone who has a multi-function computer system in their office knows just how much work has to be put in to make the various elements of the system work together, and the specification does not even provide the starting point for design of a workable system.

    Incidentally, the Aatrix decision is worth reading, especially for the thoughtful dissent of Judge Reyna.

  2. angry dude March 17, 2020 11:09 am

    Paul Cole @1

    Looking for more US patent prosecution work ?

    Thanks but no thanks, dude

    btw this is not to say that most US patents (mostly owned by big tech corps) are non-enabled junk with no value other than possibility of legally harassing smaller competitors

  3. Pro Say March 17, 2020 4:31 pm

    One of the worst 101 / Alice rejection cases ever.

    As Consumer’s excellent briefs showed, the Dist. Ct. didn’t properly follow 101 (not nearly) — including, apparently (without reading all the case filings), not following Alice by stating / alleging the one and only one abstract idea / concept to which all the claims at issue are directed to.

    It was Alice step one — step two conflation at it’s best (worst).

    And just as bad, this CAFC panel then let the Dist. Ct. get away with it.

    These inventors — like so many others since the unconstitutional Mayo and Alice decisions — were robbed.

    Welcome to American innovation 2020.

    D.O.A.

    R.I.P.

  4. Paul F. Morgan March 18, 2020 1:50 pm

    Another example of many 101 decisions being used to promptly and inexpensively dispose of patents issued with glaring 103 and 112 issues missed by PTO application examinations. Timed access locks have be used on bank vaults and in other locations for generations, and allegedly no apparatus of any kind is suggested in this specification or claim? Fed. Cir. judges are not blind to such defects and thus not surprisingly may simply sustain such 101 suit disposals of suits that would seem highly likely to have eventually lost anyway.

  5. Anon March 18, 2020 5:45 pm

    Mr. Morgan,

    As an attorney, are you really meaning to imply that the Ends justify the Means?

    The “oh well there are 103 and 112 problems, so nuking under 101 is ok” is NOT ok.

  6. Model 101 March 23, 2020 2:51 pm

    The priority date doesn’t matter, the record evidence doesn’t matter, expert testimony doesn’t matter… exclusivity, treble damages, injunction, a royalty… c’mon.

    Another waste of money on a patent and litigation.

    The patent told the winners how to do it…so they did it! They figured it out right from the patents. Pure genius!

    This is the American way. Tell, in detail, everyone how to do it.

    Crazy!!!!!! The 101 caper is alive and well and continuing. SCOTUS – forget it!

  7. B March 24, 2020 10:40 pm

    @ Paul Morgan “Another example of many 101 decisions being used to promptly and inexpensively dispose of patents issued with glaring 103 and 112 issues missed by PTO application examinations. . . . ”

    You’d make a great Federal Circuit judge. You have the knack of ignoring any claim limitation that gets in the way of a brain-dead conclusion, and believe that certain judges are magically gifted with omniscience even when the conclusions of such judges are contradicted by every iota of evidence on the record.

    That’s the problem with 101. It’s an evidence-free way to veto patents by judges who lack the intelligence and creativity to do anything but pen unbelievably bad fiction passing as a legal opinion.

    The problem with this appeal can be summed up in three words: REYNA, CHEN, and HUGHES. What an unfortunate draw at the CAFC.