Drafting Lessons from a 101 Loss in the Eastern District of Texas

By Gene Quinn
April 13, 2021

“From a drafting standpoint, the lesson here for patent practitioners is simple. Just because your claim is long does not mean that it will be patent eligible.”

https://depositphotos.com/21468819/stock-photo-lost-creativity.htmlOn March 30, Judge Sean D. Jordan of the United States Federal District Court for the Eastern District of Texas, issued a rather atypical Order, at least for the Eastern District of Texas. A defendant prevailed on a motion to dismiss. See Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., Civil No. 4:20-CV-448-SDJ.

Those familiar with patent litigation know that, over many years, the Eastern District of Texas has been a notoriously favorable venue for patent owners to pursue patent infringement lawsuits against alleged infringers. One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants. It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.

A Look at the Patent

Repifi is the owner of U.S. Patent No. 10,304,268 (the “268 patent”), which is a visitor credentialing system for access-controlled environments that requires a smart-phone platform with global positioning system (GPS) and an electronic badge configured to communicate information to the platform through the smart-phone app. Repifi alleged that defendant IntelliCentrics implemented a similar method using a smartphone app and an electronic badge scanner to facilitate visitor credentialing and checking in and out at healthcare facilities. Repifi filed an infringement suit against IntelliCentrics, claiming that IntelliCentrics’s method infringed only claim 1 of the ’268 patent.

Claim 1 of the ‘268 patent reads:

    1. A method for credentialing visitors to an access-controlled environment by an access administrator, comprising the steps of:

(a) providing a smart-phone based credentialing platform having global positioning system (GPS) capability;

(b) providing an electronic badge having a display having electronically controlled and changeable indicia thereon, the badge adapted communicate with a smart-phone;

(c) enrolling a visitor into the credentialing platform by entering visitor information based on requirements of the administrator;

(d) approving, by the administrator, that the requirements of the step of enrolling are met;

(e) requesting, by the visitor, at least one location for which access is desired and submitting the at least one location to the administrator via the credentialing platform, said location having a pre-defined area;

(f) approving, by the administrator, the request for access at the at least one location;

(g) checking in on the smart-phone, by the visitor, via the credentialing platform, to establish check-in data including check-in time and date by the visitor, wherein the check-in data is recorded by the credentialing platform;

(h) communicating between the smart-phone and the electronic badge, indicia data for forming a display image on the display on the electronic badge;

(i) displaying on the badge display indicia showing access by the visitor is authorized to the location during the specific time interval;

(j) recording, by the credentialing platform, geo-location data of the visitor during the visitor’s presence in the pre-defined area;

(k) checking out of the system when the visitor departs the pre-defined area of the at least one location, establishing check-out data, including check-out time and date and geo-location;

(l) recording, by the credentialing platform, the check-in data, the geo-location data and the check-out data of the visitor; and

(m) removing from the badge display, the indicia showing access by the visitor is authorized.

Nixed by Alice

Attorneys for IntelliCentrics filed a motion to dismiss based on the argument that Repifi’s patent is invalid for failing to claim patentable subject matter because it is directed to and claimed an abstract idea. The court agreed that the claim covered an abstract idea of credentialing visitors and checking the visitor in and out of an access-controlled environment. The court concluded the claim merely delineates “a method for accomplishing this longstanding human activity,” and implements that method using “existing technology such as smart phones and electronic badges.”

The court also found that the claim in question did not contain an inventive concept under the second step of the Alice inquiry. The court found that the only element of Claim 1 that potentially supplied an inventive concept was the electronic badge. Based on the elements of Claim 1, the two primary functions of the electronic badge were: (1) its ability to communicate with the phone, and (2) its ability to change its display in response to the communications from the smartphone. The court found that neither element claims “any technological improvements to the electronic badge that enable it to communicate with a smart phone and change its display accordingly.” In making this finding, the court noted that Repifi’s patent’s specification admits that the electronic card “can be a commercially available smart card.”

“The specific holding of the court was that systems for streamlining credentialing and check-in/out processes are a well-established business practice and a common method for organizing human activity,” explained Mike Wilson, a partner with Munck Wilson Mandala, the lead attorney who represented IntelliCentrics in this litigation. “The claim failed to claim more than an abstract idea because the patent didn’t make any technological improvements. This is a key take away from this ruling.”

The order only ruled on the validity of Claim 1 of Repifi’s patent, which was the only claim asserted in the complaint. The case was dismissed without prejudice, which does leave open the possibility that Repifi could refile its complaint to assert other claims of the patent. Repifi may, of course, appeal the court’s decision directly to the Federal Circuit.

Dos and Don’ts

From a drafting standpoint, the lesson here for patent practitioners is simple. Just because your claim is long does not mean that it will be patent eligible. When one looks at the claims found patent eligible in seminal decisions from the Federal Circuit, the claims are often quite short. See, for example, the claims in  Finjan, Inc. v. Blue Coat Systems, 879 F.3d 1299 (Fed. Cir. 2018) and Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017). Therefore, it is absolutely essential to describe the innovation with precision and exactitude in the specification. And for goodness sakes, do not say that off the shelf components can be used or otherwise trivialize any aspect of the innovation.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 10 Comments comments.

  1. B April 13, 2021 2:05 pm

    I saw a 900-word claim held patent ineligible by the PTAB under Alice/Mayo. Assignee was IBM.

    It’s not about any sane test under the sun.

    Turning to the instant case, Judge Jordan spews a half-dozen pages on the “inventive concept” garbage test while refusing to define what an inventive concept is, and ends his brainless Order with the usual tripe of cliche Alice/Mayo phrases.

  2. Curious April 13, 2021 2:42 pm

    Sigh … just another Court decision emblematic of the result-based analysis performed by the Courts that days with regard to patents.

    This is a 12b6 motion to dismiss for failure to state a claim. If I looked at a claim, I’m pretty sure there were sufficient facts alleged to state a claim for infringement — that is the purpose of 12b6 to determine whether a claim was stated — not to evaluate an affirmative defense.

    Presumption of validity? Court didn’t even mention it.

    Clear and convincing evidence provided by defendant to support an invalidity defense? Oh wait, a 12b6 motion is prior to the evidentiary stage — there is no evidence presented and any facts alleged must be construed in a light most favorable to the plaintiffs.

    The invention is described as being “directed to the abstract idea of credentialing visitors and checking them in and out of an access-controlled environment.” Let’s just assume that this is correct, there is certainly more to the invention than “the electronic badge.” The court wrote:
    The two primary functions of the electronic badge based on these elements are (1) its ability to communicate with a smart phone and (2) its ability to change its display in response to the
    communications from the smart phone. However, none of the elements lists the technology or the method by which the electronic badge is able to perform these functions. In other words, the elements do not claim any technological improvements to the electronic badge that enable it to communicate with a smart phone and change its display accordingly; rather, the elements simply claim the use of an electronic badge that can perform these functions.

    Why is it that Courts don’t understand that claims do not have to describe how to make and use the invention? Therefore, there is no requirement for the claims to “list[s] the technology or the method by which the electronic badge is able to perform these functions.” See 35 USC 112 first and second paragraphs. The reason is that the Federal Circuit has previously decided to introduce a requirement not found in the statutes (and actually inconsistent with 35 USC 112).

    The Court also wrote “Nor do the elements, when considered as an ‘ordered combination,’ supply an adequate inventive concept.” The plaintiff claimed that it did. This is Berkheimer/Aatrix, which seems to be getting more and more frequently ignored at the USPTO, the District Court, and at the Federal Circuit.

    The Court phrased the issue as this:
    Because the Court concludes that claim 1 is directed to an abstract idea, the Court must next determine whether an element of the claim or a combination of elements “is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”
    Notwithstanding that no one really knows for sure what “significantly more” means, these claims certainly are significantly more than “credentialing visitors and checking them in and out of an access-controlled environment.” I could imagine there are dozens? a hundred or more? different patents that involve this so-called abstract idea. This is hardly a claim directed to creating an access-controlled environment by credentialing visitors with a computer.

    There is little to be taken from this decision other than a recognition that judges will do what they want — the law be damned.

  3. Pro Say April 13, 2021 4:34 pm

    Bingo, Curious @ 2.

    The law — and the facts — be damned.

    This claim easily passes the unconstitutional Alice / Mayo test.

    Congress: Where the h are you?

    Where? Are? You?

  4. concerned April 14, 2021 7:16 am

    In my prosecution, Berkheimer is totally ignored and no party has disputed that a longstanding problem was solved, hence, there has to be an inventive step.

    We repeatedly state what the inventive step is and that argument is not addressed.

    This article could have been written in 5 words: Your application/patent will be rejected/invalidated.

  5. J. Doerre April 14, 2021 10:18 am

    concerned,

    If the examiner is making a factual finding of conventionality without any evidentiary support or taking of official notice, then your attorney will likely be able to press that point with a supervisor or the Board.

    Inventive step is a much murkier issue.

    I am curious – what is the application no.?

  6. concerned April 14, 2021 12:13 pm

    J Doerre:

    Thank you for your input. Application #14450042.

    Our inventive step is the tracking of a parent of an adult. Nobody in any field of commerce tracks the parent of an adult. Can you name one? And in my specific field it has never been done. Both the Board and examiner(s) do not address this proven fact (documents submitted into the official record by every Medicaid authority in the country); nor do the Board and examiners submit any of their own evidence to back up their rejections.

    Both examiners have switched arguments and so did the Board, who used a new grounds of rejection (mental process). It is hard to dignify this new grounds of rejection, which we did in our response. If disability attorneys across the nation and working professionals in the field have not been able to solve this problem mentally with their brains since 1956 (inception of the program), then how does the Board feel it can be mentally accomplish? I would personally kiss the a** of every Board member if I hand them a list of 1.5 million people and the Board can mentally pick out the people in question. Of course, no evidence was given how the Board would magically do the same. In fact, the official record showed the solution could not be physically done by two universities using experts in my field (without our inventive steps).

    There is a difference when a process that has never been done in any field and it solves a substantial problem (conceded by both examiners) is placed on a computer vs. slapping a process previously done, no agreement that the process solved any problem and it was slapped on a computer.

    The court cases we used to support are position were not addressed, and the examiner and Board used court cases where no apparent major problem was solved, and the process was used in that field or other fields. Really: What major problem was solved by Electric Power Group collecting data that had existed for 65 years?

    Curious has it right: There is little to be taken from this decision other than a recognition that judges will do what they want — the law (logic and evidence) be damned.

  7. George April 14, 2021 5:46 pm

    “And for goodness sakes, do not say that off the shelf components can be used or otherwise trivialize any aspect of the innovation.”

    Why, Gene? LOL!!!

  8. ipguy April 15, 2021 9:48 pm

    “From a drafting standpoint, the lesson here for patent practitioners is simple. Just because your claim is long does not mean that it will be patent eligible.”

    Well, the lesson for patent practitioners has always been just because an Examiner allows your claim does not mean that it won’t be invalidated years later for reasons that were unforseeable at the time the claims were allowed. Now, the patent application in this particular case was filed 09-06-2018 so I’ll give the scribe the benefit of the doubt that they were trying to address 101 issues going into it. It’s also possible they made the claim the length it was because they believed it was in a crowded field with lots of prior art. Some practitioners go for a picture claim to get an allowance, and then file broader claims in a continuation once the examiner establishes the prior art.
    However, this patent appears to have been a first action allowance. In the Reasons for Allowance, the examiner seemed to mess up on the claim numbering (filed with Claims 1-20, and Claims 1-20 were allowed but the examiner said “Claims 20-24 and 26-30″ were allowed.”). Laziness? The examiner who allowed it seems to has gone to the PTAB a number of times, but I could not find a PTAB decision involving him where a 101 rejection was at issue. Maybe this examiner simply does not believe in making 101 rejections and since the examiner is a Primary Examiner, more often than not his allowances won’t be questioned by his supervisor or QC.
    In sum, was this bad scribing or bad examination?
    In my view, patent practitioners should always strive to have the briefest, broadest independent claims they can possibly get allowed.

  9. Peter Corcoran April 19, 2021 8:07 am

    “It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.”

    This is a COMPLETE EXAGGERATION and continues to fuel the decades long hoax of how plaintiff friendly EDTX is. If this statement were true, Judge Jordan would have DENIED defendant’s motion to dismiss in this case. Venues like NDCA, CDCA, SDNY, and NDIL on the other hand are GROSSLY defendant friendly and dismiss patent cases before the ink is even dry on complaints. And don’t even get me started on the PTAB. The PTAB is bought and paid for by big tech. Don’t expect a fair trials and procedural processes in venues like these if you’re a patent owner.

    C’mon Gene. You can do better.

  10. Chris Whewell July 27, 2021 11:12 am

    There were many applicants having filed applications with, like… 13 elements or more in a main claim over the past 20+ years, in various fields. Under 103, it is difficult for an Examiner to reject claims having a lengthy plurality of elements included as claim limitations. As a result, many patents were issued which probably shouldn’t have been. Then came the sec. 101 issues as an Examiner’s tool, But, I still don’t think its right to classify as an “abstract idea” a claim whose elements, if cooperatively connected as described in the spec, produces a working device or system capable of useful function. “Abstract idea” just doesn’t sit well with me, if what is claimed can be reduced to say, a machine. I hate to suggest it but maybe the examining corps should use 103 more often !