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

By Rebecca Tapscott
November 12, 2020

“The court 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.’”

Alice/MayoOn 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.

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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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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 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 9 Comments comments. Join the discussion.

  1. Pro Say November 12, 2020 9:58 am

    If this innovation-killing eligibility cancer spreads much further (e.g. to and among other District Courts and their judges + is affirmed by the Federal Circuit ala’ garage door openers and auto drive shafts), we can forget about critically important protection for American IoT (Internet of Things).

    IoT? DOA. RIP.

    While Congress dithers, American innovation burns.

  2. concerned November 12, 2020 1:05 pm

    “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.”

    ====

    Considering my inventive concept has never been used in my field, or any field (to include the pony express lol), I looking forward to the PTAB response regarding abstract under Part 1 and significantly more under Part 2.

    The USPTO examiner did not dispute the above fact, he just ignored the statement.

  3. Paul Morinville November 12, 2020 1:52 pm

    Pro Say, Correction: “while Congress dithers, American innovation” has burned.

  4. David Lewis November 13, 2020 2:54 pm

    It sounds like the inventor had a novel and unconventional configuration of hardware components. The court seems to overlook the fact that all inventions are combinations of old components, and likely all old components (and therefor all components) are inherently combinations of conventional components.

    I guess that means that a transistor is based on the abstract idea of changing something and a can opener is based on the abstract idea of opening something.

    In fact, if a hardware relay is an abstract idea, likely all hardware is based on abstract ideas, also.

  5. Anon November 13, 2020 8:16 pm

    Mr. Lewis,

    It is turtles all the way down.

    Everything is made of matter, matter itself – considering the traditional notions of electrons, neutrons and protons — ‘conventional’ in this universe since VERY soon after its formation – is made up of other particles (and to a huge amount, actually nothingness).

    The moment that ANY invention is actually made up of something NOT so similarly situated is the moment that we all should be concerned.

  6. Benny November 14, 2020 3:39 am

    David Lewis, conentrate on the inventive concept and not the the known components. A hardware relay is not an abstract idea. A computer is not an abstract idea. Programming a computer to awitch the relay when a certain condition is true is arguably abstract. (I’m not going to argue about it). Granting a separate patent for every condition in which the computer might command the relay to switch…well have fun.

  7. Concerned November 15, 2020 6:58 am

    Benny:

    “conentrate on the inventive concept and not the the known components.”

    Why can you not apply your own statement to my patent application?

    Previously on another thread, you stated that I would not receive a patent in your opinion. You continued by saying that your statement is probably contrary to oatent law.

    The examiner has not addressed my inventive concept in the official record and I would also challenge you to find one instance in commence where my concept is used. I already proved in my field that it is not used, however, your challenge is expanded to any field.

    My examiner did just the opposite of your advice, focused on the known components and ignored everything else. Then he admits the problem solved a decades old problem that has been beyond the reach of millions(?) of working professionals and experts.

    It is hard to respect the current patent environment.

  8. Anon November 15, 2020 8:21 am

    Concerned,

    It’s even harder to respect Benny, who offers platitudes, but still barks the dog-whistle rhetoric of the Efficient Infringers.

  9. David Lewis November 16, 2020 1:03 pm

    Benny and everyone else, thanks everyone for your response to me comment and the follow up comments.

    Regarding concentrating on the inventive concept, not the components, that is my point – all inventive concepts can trivialized to “abstract” ideas in the manner that this decision does that, whether it is a new transistor or a new can opener. Analogizing the concept to the pony express does not make it abstract. I think one can find such an analogy for essentially any inventive concept (albeit not specifically to the pony express).

    Admittedly, that was likely not the intent of the decision (no one intentionally writes decisions with far reaching absurd conclusions when the logic of the decision is taken to its absurd conclusion), but I think that the criticism of such logic is still valid.

    Thanks again for all your comments.

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