“Techtronic argues that the petition ‘mischaracterizes’ the Federal Circuit’s holding by disregarding the record; that the Federal Circuit did consider the claims ‘as a whole’ despite Chamberlain’s question implying that it did not; and that Chamberlain’s recent arguments conflict with its earlier ones.”
On August 7, Techtronic Industries filed a brief in opposition to The Chamberlain Group’s petition to the U.S. Supreme Court asking for review of “whether the Federal Circuit improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole.’” Techtronic’s brief asks the Court to deny the petition, and presents the following two questions in the case it is granted:
- Whether the Federal Circuit, on the particular facts of this case, erred in analyzing the claims as a whole.
- Whether Chamberlain forfeited and is estopped from making its current arguments about the scope and preemptive effect of its claims in view of its inconsistent arguments below.
From CAFC to SCOTUS
The Chamberlain case has been well documented by IPWatchdog. In August 2019, the Federal Circuit found the disputed claims of U.S. Patent No. 7,224,275 (the ‘275 patent) for a “moveable barrier operator” (for example, a garage door opener) to be ineligible because “wireless transmission” was the only element of the claims that was inventive over the prior art. The Court noted that “transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology.” Thus, since “wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to,” the Court held that “no inventive concept exists in the asserted claims sufficient to transform the abstract idea of communicating status information about a system into a patent-eligible application of that idea.”
In May of this year, Chamberlain petitioned the Supreme Court, asking it to consider whether the Federal Circuit “improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole,’ where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.”
In July, amici High 5 Games and Judge Randall Rader filed a joint brief with Chargepoint, Inc.—which recently lost its own plea to the High Court to fix Section 101 law—and High 5 Games submitted a separate brief. Both backed Chamberlain’s petition and urged the Court to resolve the uncertainty around U.S. patent eligibility law once and for all, and sooner rather than later.
Says Versus Does
In its response, Techtronic argues that the petition “mischaracterizes” the Federal Circuit’s holding by disregarding the record; that the Federal Circuit did consider the claims “as a whole” despite Chamberlain’s question implying that it did not; and that Chamberlain’s recent arguments conflict with its earlier ones.
Chamberlain in its petition said that, in its opinion in this case as well as more broadly, “the Federal Circuit reduces each claim to a single supposed point of novelty and asks only whether that one feature reflects an abstract idea, law of nature, or physical phenomenon.” The petition added:
As exemplified by this case, the court says it is assessing the “claim’s character as a whole,” but in the next breath it does the opposite: It separates claims into purportedly old and new elements and “look[s]” only “at the focus of the claimed advance over the prior art,” ignoring more familiar aspects of the invention.
But Techtronic argues that the panel explicitly stated that it considered “the claim’s character as a whole” and concluded it was abstract.
There is no dispute about the legal standard: Chamberlain asks this Court to hold that Alice requires consideration of the claims as a whole—which the panel explicitly did. Chamberlain merely complains about the application of this well-established standard to the facts of this case.
The reply brief also says that Chamberlain’s argument in the petition at Alice Step 2 that its design choices suffice as an “inventive step” is forfeited. “That the Federal Circuit did not address an argument which Chamberlain did not make neither demonstrates error in the panel’s decision nor warrants review by this Court,” says the brief in opposition. It adds that there is nothing inventive about putting a controller in a garage door opener:
Chamberlain’s argument that “a garage door with a controller” is an inventive concept is the equivalent of suggesting that the claims in Alice would have been eligible for patent protection if, instead of just reciting a computer, they had recited “a computer with a mouse and keyboard.”
The brief goes on to argue that Chamberlain’s claims are “broadly preemptive”; that Chamberlain’s eligibility arguments have changed materially since the Federal Circuit case; that the case is particularly unsuitable as a vehicle to examine the law of patent eligibility; and that “there is nothing important about the questions presented,” since Chamberlain is merely asking the Court to tell the Federal Circuit to reaffirm that courts should evaluate the claims as a whole, which they are already doing.
Former Federal Circuit Chief Judge Paul Michel and former U.S. Justice Department lawyer John Battaglia, however, have argued that “[t]he case… spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed” and said that he agrees with Chamberlain that its case presents a “patent emergency.”
Techtronic’s petition concludes with the argument that Chamberlain’s claims are ineligible under any “reasonable” test for patent eligibility. The brief points to Judge Rader’s statement in his amicus brief that “there is no dispute that the claims involve the identified well-known idea of ‘wirelessly communicating status information about a system,” purposely omitting the rest of Rader’s sentence (“but there is much dispute as to whether it is permissible to simply ignore the reality that the claim is plainly directed to a “movable barrier operator).
Techtronic argues that there is no question that a party can’t patent the abstract idea of wirelessly transmitting information; nor can one restrict the abstract idea to a particular field of use to satisfy the eligibility requirement; and that “If Section 101 is anything more than a dead letter, then a party cannot claim an abstract idea, whether it drafts its claims in the form of a method claim or (as Chamberlain has done) as a system claim.”
On August 13, Chamberlain filed a request with the Supreme Court to delay distribution of its petition by seven days “due to the logistical difficulties and dislocations caused by the COVID-19 pandemic, including the need to coordinate among multiple law firms each operating remotely.”
The petition is currently scheduled for distribution no earlier than August 26. Chamberlain’s request would delay distribution until no earlier than September 2. The conference date—September 29—would remain unchanged.