Illinois District Court Finds Appliance Controller Patents Ineligible under Alice/Mayo

On November 6, the U.S. District Court for the Northern District of Illinois, Eastern Division, granted a motion to dismiss an infringement suit on the grounds that the patents in suit were directed to ineligible subject matter under 35 U.S.C. § 101 in Karamelion LLC v. Intermatic, Inc.

In February 2020, Karamelion filed suit against Intermatic alleging infringement of Karamelion’s U.S. Patent Nos. 6,275,166 (the ‘166 Patent) and No. 6,873,245 (the ‘245 Patent). The ‘166 patent was directed to a method for controlling a distributed array of appliances from a headend computer and the ‘245 patent was directed to an appliance controller for a distributed appliance system having a multiplicity of appliances. Intermatic moved to dismiss the suit pursuant to Federal Rule of Civil Procedure 12(b)(6) on the grounds that the ‘166 and ‘245 patents were directed to ineligible subject matter.

In particular, Karamelion asserted that Intermatic’s “InterMatic MultiWave System Controller and Z-Wave Dimmers, temperature sensor receivers and other Z-wave supported devices,” perform “actions comprising using an appliance controller for a distributed appliance system having a headend computer to satisfy the method steps of claim 16” of the ‘166 Patent. In addition, Karamelion alleged that Intermatic was “making, using, selling, and/or offering for sale an appliance controller for a distributed appliance systems [sic] having a multiplicity of appliances, and a plurality of relay units, that satisfies the limitations of at least claim 1” of the ‘245 Patent.

Alice/Mayo Framework Step One

Applying the two step test set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. Pty. v. CLS Bank Int’l, the court noted that step one of the test was to determine whether the claims-at-issue were directed to an abstract idea. The court explained that Karamelion’s asserted improvement was the addition of relay functionality to a controller for improving communication over a distance, which “which is exactly the same solution the Pony Express used in the mid-1800’s.” The court also explained that claim 16 described the actions of the main and satellite transceivers in a list of functional steps such as “signaling …,” “decoding …,” “transmitting …,” and “feeding …,” but offered no technical details concerning the mechanics of transmission. The court went on to compare claim 16 to the claim in Two-Way Media Ltd. v. Comcast Cable Commc’ns, wherein “the Federal Circuit concluded the claim was directed to an abstract idea because it invoked generic components and failed to provide any technical detail regarding the mechanics of transmitting communication.”

The court also noted that the hardware recited in the claims-at- issue, such as the headend computer, the main radio transceiver or transmitter, the satellite transceivers, the appliance interfaces, and the microcomputers, were “generic components employed in their off-the-shelf capacity, so the combination of the components works in an entirely predictable manner.” The court rejected Karamelion’s argument that the claims were not directed to an abstract idea because they recited language to highlight the tangible components of the invention, explaining that “[t]he mere fact that an abstract idea is implemented in a concrete or tangible way does not change the underlying, patent-ineligible focus of the claims.” Thus, the court concluded that the claims at issue were directed to the abstract idea of using a network of relays to communicate over a distance.

Alice/Mayo Step Two

The court then considered step two of the Alice/Mayo framework, i.e. whether the claims presented an inventive concept or application that is “significantly more” than the ineligible subject matter. Karamelion argued that the elements of claim 1 of the ‘245 Patent combined generic components to create its “improved appliance controller” and the combination formed “an unconventional solution that the prior art failed to adequately address and which, therefore, is inventive.” Citing the Federal Circuit’s decision in ChargePoint, Inc.  v.  SemaConnect,  Inc., the court explained that the Federal Circuit has held that “communicating over a network for device interaction” was an abstract idea despite the addition of a generic transceiver capable of network communication to a charging station and then remotely controlling  it via a wide area network.  The court noted that the “allegedly unconventional solution [in the present case] is to add a generic satellite transceiver to an appliance controller and then to remotely control it by relaying communications through the network of relay-enabled appliance controllers.”

However, the court explained that is was not “unconventional… beyond simply positioning a generic microcomputer between the generic satellite radio transceiver and the generic appliance interface with instructions to operate the transceiver as a relay.”

The court further explained that although Karamelion’s solution may be a novel application of network communication to a particular problem, “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.” Thus, the court concluded that the claims at issue were directed to an abstract idea and did not present a patent-eligible inventive concept or application. The court granted Intermatic’s motion to dismiss with prejudice.

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