District Court Finds Palomar’s ‘Pick and Place’ Patent Invalid Under 101

By Rebecca Tapscott
June 3, 2020

“The district court concluded that the ’327 Patent was directed to the abstract idea of placing an item at an intermediate location before moving it to a final one in order to increase the accuracy of the final placement and is applicable to an ‘almost infinite breadth of applications.’”

Limiting Section 325(d) Delegation Will Ensure More Predictable Inter Partes Review ProcessIn a follow-up to a decision earlier this month blocking an attempt by Palomar Technologies, Inc. to bar new prior art references based on IPR estoppel, the U.S. District Court for the District of Massachusetts on May 28 has now granted a motion for summary judgment by MRSI Systems, LLC (MRSI), holding U.S. Patent No. 6,776,327 (the ‘327 patent) invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible abstract idea.

The ‘327 Patent and Prior Proceedings

The ‘327 patent, entitled “High-accuracy Placement Method Utilizing Double Pick and Place”, is directed to a method of moving a first workpiece, such as a die, from an “origination location” to an “intermediate location” and then moving the first workpiece to an “attach location” where the first workpiece is attached to a second workpiece.  In general, a process of attaching a die to a circuit body involves an initial step, i.e. a “pick and place” operation, wherein “the die is picked from a remote location by a tool and placed on the circuit body at the location where attachment is desired.”  The ‘327 describes the method disclosed therein as an improvement over typical “pick and place’ operations due to its automated placement method that is “both time efficient and highly accurate.”

In 2015, Palomar filed a suit against MRSI for infringement of the ‘327 Patent. Later that year, MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the ‘327 patent. The PTAB instituted review on each of six grounds raised in the petition and, ultimately, upheld the validity of 47 claims and invalidated one claim. During the IPR, Palomar’s action against MRSI had been stayed by the Southern District of California. Following the IPR proceedings, the litigation was resumed and after MRSI filed to transfer the case due to improper venue, as per the newly decided TC Heartland case, transferred to the District Court for the District of Massachusetts (the district court). The district court denied a motion for partial summary judgment by Palomar Technologies, Inc., holding that the estoppel bar relating to inter partes review (IPR) proceedings did not apply to two newly discovered prior art references that had not been known of or raised in a prior IPR hearing at the Patent Trial and Appeal Board (PTAB).  Most recently, MRSI moved for summary judgment under the abstract ideas and natural law exceptions to 35 U.S.C. §101. In response, Palomar moved for partial summary judgment on the issues of literal infringement, MRSI’s claim of invalidity under 35 U.S.C. § 101, MRSI’s claims of invalidity under 35 U.S.C. § 112, and MRSI’s public use defense.

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District Court Analysis

Considering claim 1 to be a representative claim, the district court first determined whether the claim was directed to an abstract idea. The court reviewed Palomar’s arguments that McRO, Inc. v. Bandai Namco Games Am. Inc and Diamond v. Diehr were analogous because the ’327 Patent describes a method for solving a known “technological problem in conventional industry practice” in a specific field.  In McRO, the Federal Circuit found claims relating to “specific asserted improvement in computer animation” to be patent eligible because of the “specificity of the ordered rules within the claim and the fact that the outcome itself—lip-synched computer animation—was not covered by the patent.”  In Diamond v. Diehr, the claims were held to be patent eligible because they “employed a detailed process ‘to solve a technological problem in conventional industry practice’ by improving the molded-rubber curing process.”  In rejecting Palomar’s arguments, the district court reasoned that the ‘327 Patent “accomplishes a much broader goal in a much less specific way than the patents found in Diehr and McRO”, which claimed “methods so specific and concrete as to lack application beyond their express uses”.

The district court referred to Ultramercial, Inc. v. Hulu, LLC, wherein the Federal Circuit found an 11-step process of displaying advertisements in exchange for access to copyrighted media to be directed to an abstract idea even though certain recited claim limitations added a degree of particularity because “the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before  delivering free content.”  The district court noted that Ultramercial put a limit on the holdings of  Diehr and McRO  by clarifying that “a process or method patent [with claims having a degree of particularity] may nonetheless be directed toward an abstract idea if the ‘the majority of the limitations’ are ‘devoid of a concrete or tangible application.’”  The district court concluded that the ’327 Patent was directed to the abstract idea of placing an item at an intermediate location before moving it to a final one in order to increase the accuracy of the final placement and is applicable to an “almost infinite breadth of applications.”

The district court moved on to the question of whether the claims include a sufficiently “inventive concept” to “transform” the abstract idea in a “patent-eligible application.”  Citing Mayo, the district court noted that the Supreme Court has held that “’simply appending conventional steps, specified at a high level of generality,’ was insufficient to supply the necessary ‘inventive concept.’”   The district court applied the Mayo analysis in explaining that the ‘327 patent claims “do little more than recite generalized terminology for the conventional steps that constitute the abstract idea of the placement of a component utilizing an intermediate location.”  According to the district court, there was nothing “non-conventional” or “non-generalized” about the claim elements when considered on an individual basis or as an ordered combination.

The court also considered the dependent claims but concluded that the specification does not disclose that any of the dependent claims are inventive and they only recite conventional tools or generic limitations. Further the court noted that limitations that narrow the claims to a particular environment are also insufficient to provide an inventive concept; thus, “[l]imiting claims to conventional tools within a particular environment does not provide a sufficient inventive concept to confer patentability on Alice step two.”

The district court addressed Palomar’s arguments that 1) the ‘327 Patent created a new method for accomplishing a specific task and carried no risk of preempting an entire fundamental concept, and 2) the claims of the ’327 Patent satisfy the machine-or-transformation test. With respect to the first argument, the district court cited Reese v. Sprint Nextel Corp. in stating that “merely limiting claims to a particular technological environment does not render the claims any less abstract.”  With respect to the second argument, the court noted that the machine-or-transformation test, as set forth in In re Bilski, outlines that a “claimed process may be patent eligible if ‘(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.’” The court reasoned that in order to meet the “machine” prong of the test an apparatus specific to the claimed invention must be disclosed, but it concluded that the ‘327 patent does not meet this requirement as it is not linked to any machine.  With respect to the “transformation prong”, which requires an article to be transformed into a different state or thing as a central purpose of the claimed process, the court explained that a generic attachment of two parts, as in the ‘327 patent claims, does not meet the bar for “transformation.”  Explaining that the ’327 Patent involves a patent-ineligible abstract concept and the claims do not include a sufficiently inventive concept to survive invalidation, the district court granted MRSI’s motion for summary judgment on the issue of patentability under 35 U.S.C. § 101 and denied each of Palomar’s motions.

‘Important Guidance’

Lead counsel for MRSI, Brian Paul Gearing, Ph.D., partner at Crowell & Moring LLP, stated that his team was very pleased with the result and believed that “Chief Judge Saylor arrived at a thorough and well-reasoned opinion after carefully considering all arguments and evidence in view of the applicable legal framework for invalidity under 35 U.S.C. Section 101.” Gearing further noted that the “ruling validates what we have been arguing since the very beginning when this meritless case was first filed by Palomar in July 2015.  Pending any appeals, this opinion is likely to provide important guidance for future decisions on the application of Section 101.”

In addition, MRSI co-counsel Peter Nieves, shareholder at Sheehan Phinney Bass & Green PA, expressed that the legal team was pleased with the outcome.  Nieves agreed with Gearing that Chief Judge Saylor carefully considered the matter before him and “arrived at a thorough and well-reasoned opinion.”  He further noted that “[a]s is characteristic of his decisions, Chief Judge Saylor provided beneficial guidance with his Order, this time, specifically for application of 35 U.S.C. Section 101.”

Palomar’s counsel did not respond to a request for comment.

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.

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. Model 101 June 3, 2020 12:29 pm

    Message to Palomar

    You’ve entered the den of thieves..

    Saylor…CAFC..SCOTUS…Tillis…..are all thieves and crooks.

    You have no chances! The rule of law doesn’t apply.

  2. Pro Say June 3, 2020 1:35 pm

    ” … this opinion is likely to provide important guidance for future decisions on the application of Section 101.”

    Um, no. The Alice / Mayo eligibility morass . . . cannot be guided.

    It can only be killed off.

    Alicexit.

  3. Ternary June 3, 2020 1:50 pm

    “The district court concluded that the ’327 Patent was directed to the abstract idea of placing an item at an intermediate location before moving it to a final one in order to increase the accuracy of the final placement and is applicable to an “almost infinite breadth of applications.””

    Placing an item (an object) somewhere is probably as non-abstract as an invention can be. Furthermore, claims 11 and 12 provide metes and bounds for these placements, which pose known physical challenges.

    I keep repeating related to Courts using the word “abstract:” “You keep using that word. I do not think it means what you think it means.” You know what: I know it means something entirely different from how you apply it.

    It is really beyond ridiculous. US Patent Law has become a very bad movie, when you can apply quotations from a good movie.

  4. Josh Malone June 3, 2020 2:06 pm

    This jurisprudence is taking effect. Vehicle charging systems, drive shafts, now precision robots are ineligible for patenting. Now we know don’t bother paying fees for filing, maintaining, or enforcing patents. We are planning our business ventures to compete without technological exclusivity. . .

  5. Pro Say June 3, 2020 5:01 pm

    . . . and as this latest decision re-confirms, everyone who already hasn’t figured this out needs to do the following with their patent applications:

    Load up your first claim with just as many limitations your disclosure reasonably supports. Make it the most detailed, specific, restricted, limited, “all encompassing” claim in your claim set.

    Throw in as much physical structure you can.

    And if your / your client’s claim #1 involves computers, computing, the internet, etc., it needs to be at least100 words — or more — in length.

    Load. It. Up.

    Yes; make it a picture frame claim.

    Only then should you proceed with the rest of the claim set as you would normally do.

    That way, when these “joker eligibility adjudicators” short circuit due process and justice by making your claim #1 representative or illustrative (whether or not you’ve argued eligibility for your other claims — which you sure should), you’ll be in the best position possible to traverse the unconstitutional Alice and Mayo decisions.

  6. B June 3, 2020 6:42 pm

    Another knuckle-headed b.s. decision using an unintelligible and self-contradictory test by a judge who doesn’t know any better.

  7. stepback June 4, 2020 3:31 am

    Apparently a copy of the District court memorandum can be obtained at:

    https://www.govinfo.gov/content/pkg/USCOURTS-mad-1_18-cv-10236/pdf/USCOURTS-mad-1_18-cv-10236-5.pdf

  8. Paul Cole June 4, 2020 3:31 pm

    If you look at claim 1 of the patent in issue, would anyone explain to me how the claim language significantly differentiates from returning to a vehicle cylinder a sparking plug which has been cleaned and then re-attaching the lead to the plug?

    If our profession insists on litigating claims of such woolly generality, we should not be surprised when they are thrown our by the courts. Claim 1 reads:

    1. A method for placement of a first workpiece onto a second workpiece comprising the steps of:
    a) providing a first workpiece positioned at an origination location different from a target intermediate location;
    b) providing a second workpiece positioned at a work location and having a target attach location different from said target intermediate location and said origination location;
    c) performing a first place step to displace said first workpiece from said origination location to an actual intermediate location, wherein said actual intermediate location is different from said origination location and is identical to said target intermediate location or differs from said target intermediate location by an intermediate error deviation; and
    d) performing a second place step to displace said first workpiece from said actual intermediate location to an actual attach location on said second workpiece, wherein said actual attach location is different from said origination location and said target intermediate location and is identical to said target attach location or differs from said target attach location by an attach error deviation.

    No definition until you get to about claim 20 of the field of activity with which the method is concerned. No definition of how steps c) and d) are performed – is it by a machine or by the hand of man? And in the latter case, is skill going beyond that of an ordinary mechanic needed? Just taking claim 1 as it stands, what new function is created or what new result is obtained?

    Those who throw up their hands about knuckle-headed decisions should first look at the claims defining the rights which are sought to be asserted. Bringing claims like this before the courts discredits our profession and does nothing to help those supporting the eligibility of meritorious subject matter.

  9. Pro Say June 4, 2020 5:54 pm

    Paul @ 8: Yes; yours are (likely) all great reasons to prevent the enforcement of various of the claims — including claim #1 . . . under 102 . . . and/or 103 . . . and/or 112.

    But. Not. Under. 101.

  10. Ternary June 4, 2020 6:47 pm

    Paul Cole. Did you read the actual specification? Or even all the claims?

    You have a knee-jerk reaction to a careful articulation of solving a mechanical placement issue. Strictly reading the claims, without careful analysis, may provide one NOT BEING one of ordinary skill with a reaction of “Huh?” Like you do.

    But supposedly, participants on this blog have the capacity, to read claims carefully in the context of the specification. And with the eye of a patent prosecutor. What sticks out, almost immediately, is the limitation in claim 1 “and is identical to said target intermediate location or differs from said target intermediate location by an intermediate error deviation.”

    “… returning to a vehicle cylinder a sparking plug which has been cleaned and then re-attaching the lead to the plug” is a very naive and incorrect interpretation of the claims.

    Claim 5 requires a “pickup tool.” Claim 11 requires “… attach error deviation is between about 0 and 2 degrees with respect to a rotational reference axis or between about 0 and 10 microns with respect to linear reference axes,” which is not what one does (or even can do) in replacing a spark plug.

    The inventor is entitled to try to draft the broadest possible claims that are supported by the specification. There is legally and professionally nothing wrong with that, as you know, or at least should know. It is risky, because of obviousness risks.

    Don’t make claim analysis something that should be left to any amateur playing patent Examiner. Just reciting a difficult claim without including the context of the specification as an example of being “woolly” is in my opinion by itself a “discredit” to the profession of patent prosecutors.

    The fact that you don’t understand (or have not recognized) the context of the claims, doesn’t make the claim abstract or “directed to an abstract idea.”

  11. B June 5, 2020 12:01 am

    @Paul Cole “ If you look at claim 1 of the patent in issue, would anyone explain to me how the claim language significantly differentiates from returning to a vehicle cylinder a sparking plug which has been cleaned and then re-attaching the lead to the plug?”

    Let’s assume you’re right. Reject the claims under s103. If you can’t, well that means nothing untoward is preempted.

    The Alice/Mayo test is retarded tripe suitable only for: (1) innumerate, technically ignorant, and generally feckless judges, and (2) those defendants in need of a Hail Mary defense when an actual defense isn’t available.

  12. Anon June 5, 2020 6:48 am

    Mr Cole is about confusing a ‘best practice’ concern of his with some type of “well, you deserved it” EXCUSE for the perversion of the application of US law.

    But be warned fellow commentators, “attacks” on Paul may have him calling for you to be silenced (rather than apply any level of critical thinking).

    What could go wrong with that?

  13. Paul Cole June 5, 2020 9:06 am

    Following Ternary’s challenge I downloaded the specification and briefly reviewed it.

    The drawings remind me of electrically powered model boats that I used to make and sail on a pond in Epsom when I was a child in the late 1950’s. Given that the invention might be concerned with placing chips on a circuit board, there are no apparatus drawings. At first glance the document as a whole looks trivial, and that is likely to be the impression formed by a non-technical District Court judge having to try the case.

    “The inventor is entitled to try to draft the broadest possible claims that are supported by the specification. There is legally and professionally nothing wrong with that, as you know, or at least should know.”

    Nowadays, I teach my students the Viagra criterion: “is the claimed subject matter strong enough not merely to pass the patent office but also to stand up in court?” It expresses possibly slightly crudely but hopefully amusingly and memorably an important principle, with the additional irony that in the UK the Viagra patent did not stand up in court, see Lilly Icos Llc v Pfizer Ltd (1) [2002] EWCA Civ 1 (23rd January, 2002). Unduly broad claims are unlikely to impress judges or third party attorneys tasked with due diligence/freedom to operate investigations and at best will involve the patentee in fruitless and costly litigation. It is VITAL to bear these principles in mind during drafting and prosecution, and I suspect (not least from consideration of the representative claims in many section 101 cases) that awareness of them amongst those on the prosecution side of the profession at least in the US is insufficient.

    It should not be forgotten that novelty and inventiveness are referenced in 35 USC 101 ad well as 102 and 103.

  14. stepback June 5, 2020 12:27 pm

    I think it has to be conceded by most here that the specification and drawings of this particular patent are an example of what NOT to do. The inventor probably had something much more detailed in mind. There probably was eligible and novel subject matter in there. Alas the drafter of the application stripped it away in the hopes of being more general.

    On the other hand, it is disingenuous for the district court judge (see link above @7) to analogize the pick and place problem to the playing of a golf game. Golf is played using the skeletal-muscular-neural systems of the human body as well as with a teeny tiny ball, a bunch of cave man clubs and a far away hole on a grassy field. Pick and place is done with robotics, tribology, metrology and software. These are non-analogous areas of art.

  15. Anon June 5, 2020 12:31 pm

    It should not be forgotten that novelty and inventiveness are referenced in 35 USC 101 ad well as 102 and 103.

    What is the legal point of this comment?

    Mere reference does NOT mean that section 101 is properly invoked for matters covered in sections 102 and 103.

    Any intimation otherwise is not only preposterous, but calls into question why such a statement would be made.

    Mr. Cole, you keep in insisting on wading into US Sovereign legal discussions in questionable manners.

    Can you really be surprised when people are critical of you?

  16. Anon June 5, 2020 12:52 pm

    Nowadays, I teach my students

    You are stuck in your own paradigm about best practices, Mr. Cole.

    One aspect that your students SHOULD ALSO be taught is that there may be other reasons to pursue patent protection, even if any resultant patent WOULD NOT stand up in court.

    Granted that any such ‘weaker’ patent would not be optimal, NOT ALL THINGS need to be optimal to be ‘business worthwhile.’

    And let’s not forget that it is the client and that client’s sense of ‘business worthwhile’ that we serve and NOT some academic view of optimal best practice.

    Maybe you need to get out of the classroom and back into the real world for awhile.

  17. Ternary June 5, 2020 12:59 pm

    Exactly Paul Cole: “It should not be forgotten that novelty and inventiveness are referenced in 35 USC 101.” Which says: “Whoever invents or discovers any new and useful process, ….”. It doesn’t say anything about being abstract. A discussion that has been raging here now for a while.

    Clearly, you are still unable to get past your “Huh?” moment. You gave an absolutely wrong example of something that allegedly anticipated the claim. You said you read the specification, but you find things “trivial” at first sight. But professionals have to move past that first impression. In the US patent system finding things “trivial” is conclusory. An Examiner (and Courts) in compliance with patent law have to find evidence. Though, as with many cases nowadays, as your opinion shows, “common sense” is often used to argue against cases. But “common sense” as the history of science has shown us many times is a bad guide for scientific performance.

    It is not entirely clear if you are convinced that the claims/spec themselves are bad and that the 101 ineligibility decision is correct or if you find the invention “undeserving” and thus invalidation of the patent, no matter on what grounds, is entirely justified.

    My opinion stands: the claims are not directed to an abstract idea. It is not a matter of liking or disliking the invention or the claims. Accurately placing an object on a workpiece is just not abstract. We know that from empirical experience. Concluding anything else is metaphysical nonsense.

  18. B June 5, 2020 5:13 pm

    @ Paul Cole “It should not be forgotten that novelty and inventiveness are referenced in 35 USC 101 ad well as 102 and 103.”

    Novelty, no it doesn’t.

    New, yes, but “new” means new to the inventor/discoverer. “Novelty” is handled by s102.

    Inventiveness? No, s101 does not. Judge Giles Rich observed two different definitions of “invention” with one being something someone has devise, and the other being a meaningless term

  19. Concerned June 5, 2020 6:01 pm

    Ternary @17:

    An Examiner (and Courts) in compliance with patent law have to find evidence.

    Good idea that you deliberately added “in compliance with patent law” to your statement.

    If we were together when you typed that statement I am sure we would have looked at each other and laughed knowing your tongue was firmly in your cheek. Who follows the law these days when rejecting patents?

    Stay safe and healthy.

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