Patent Claims (and Specification) Lacking in Detail Fail under 35 U.S.C. § 101
By Joseph Herndon --
The Federal Circuit issued an opinion on December 28, 2015 in the case captioned Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC regarding patent eligibility under 35 U.S.C. § 101 of method and system claims. Ultimately, the Federal Circuit found that the patent claims are ineligible under § 101 as being directed to abstract ideas coupled with routine data-gathering steps and conventional computer activity.
Vehicle Intelligence brought suit against Mercedes-Benz USA, LLC and Daimler AG alleging infringement of U.S. Patent No. 7,394,392. Following claim construction, the Northern District of Illinois granted Mercedes-Benz's Rule 12(c) motion, declaring the disputed claims invalid as drawn to patent-ineligible subject matter under 35 U.S.C. § 101 and dismissing the case with prejudice. Vehicle Intelligence appealed from the Northern District of Illinois's judgment declaring claims 8, 9, and 11-18 invalid under 35 U.S.C. § 101.
The '392 patent claims methods and systems that screen equipment operators for impairment, selectively test those operators, and control the equipment if an impairment is detected. The '392 specification lists examples of equipment within the scope of its claims, including "automobiles, trucks, industrial vehicles, public transportation vehicles, such as buses, subways, trains, planes, and ships, and dangerous machinery in general." It also provides examples of the types of impairments its claimed methods and systems may screen for and test: intoxication (from alcohol or chemicals); physical impairments (injuries from accidents or "violence against" the operator, blindness, lack of air, or poisonous or disabling gases or dust); medical impairments (stroke, heart attack, diabetic coma, exhaustion, or infectious disease); or emotional impairment (grief, anger, psychosis, anxiety, or euphoria).
Independent claims 8 and 16 are provided below.
8. A method to screen an equipment operator for impairment, comprising:
screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;
selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and
controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.
16. A system to screen an equipment operator, comprising:
a screening module to screen and selectively test an equipment operator when said screening indicates potential impairment of said equipment operator, wherein said screening module utilizes one or more expert system modules in screening said equipment operator; and
a control module to control operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening module includes one or more expert system modules that utilize at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.
The Federal Circuit analyzed the claims using the familiar two-step test introduced in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–98 (2012), and further explained in Alice Corp. Party v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). The first step includes determining whether the claims at issue are directed to a patent-ineligible concept. The second step includes examining the elements of the claim to determine whether it contains an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application.
First Step—Are Claims Directed to a Patent-Ineligible Concept?
The Federal Circuit agreed with the District Court that the claims at issue are drawn to a patent-ineligible concept, specifically the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.
The Federal Circuit noted deficiencies in the claims in that "[n]one of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the 'expert system' to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results." Vehicle Intelligence attempted to show that the use of an "expert system" improves over the prior art by providing faster, more accurate and reliable impairment testing. But, the Federal Circuit stated that neither the claims at issue nor the specification provide any details as to how this "expert system" works or how it produces faster, more accurate and reliable results.
All of Figures 1-16 of the '392 patent are generic block diagrams. The most detailed description of the "expert system" is in Figure 8 of the '392 patent, reproduced below.
As can be seen, Figure 8 is very general and lacking in detail as to components of the "expert system". The description for Figure 8 states that the "decision module 1002 makes the actual determination of whether or not the equipment operator is impaired and decides which control response to make if there is an impairment." It then lists equipment operator characteristics that may be measured and states that this information is used to determine if the equipment operator has a "true impairment."
The Federal Circuit stated that "critically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics; assuming these measurements can be made, how the decision module determines if an operator is impaired based on these measurements; assuming this determination can be made, how the decision module decides which control response to make; and assuming the control response decision can be made, how the 'expert system' effectuates the chosen control response."
Thus, in the absence of any details about how the "expert system" works, the claims at issue are drawn to a patent-ineligible abstract idea, satisfying Mayo/Alice step one.
Vehicle Intelligence challenged the District Court's application of Mayo/Alice step one, arguing that the claims at issue do not preempt all equipment operator testing. It argues that the existence of prior art methods of equipment operator testing, evidenced by the eleven prior art references identified in the '392 specification, prove that the claims at issue do not preempt the abstract idea of performing equipment operator testing because these references describe non-infringing methods for doing so. Notably, the Federal Circuit stated that "This argument is meritless." The Federal Circuit explained that while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter. The Federal Circuit noted that if Vehicle Intelligence's argument was adopted, all a patentee would need do to insulate itself from a § 101 challenge would be to identify a single prior art reference in the specification and state that its invention improves upon that reference.
Second Step—Do Claims Contain an "Inventive Concept" to Transform into Patent-Eligible Status?
The Federal Circuit also agreed with the District Court that the claims at issue fail Mayo/Alice step two.
Vehicle Intelligence argued that its methods are embedded in "specialized existing equipment modules," as opposed to generic computers, which renders them patent-eligible. The '392 specification explains that the "specialized existing equipment modules" are things such as the gas and brake pedals and the steering wheel of a car, as well as stereo, navigation, anti-theft, and climate-control systems.
Again, though, absent from the '392 patent is any explanation of how the methods at issue can be embedded into these existing modules. The only details related to this point provided in the claims at issue is that the methods involve using "at least a portion of" these existing equipment modules (claims 9, 12, and 16–18) and "a time-sharing allocation of at least one processor executing at least one expert system" (claims 8, 9, and 11–15). The specification does not provide any more detail and, in fact, explains that the processors used in the methods may be "based on any commercially available microprocessor of any word bit width and clock speed, a control Read-Only-Memory, or a data processing equivalent." The Federal Circuit noted that arguing that the claimed methods are tied to particular machines alone is insufficient to confer eligibility.
Vehicle Intelligence argued that there are at least four inventive concepts in the claims at issue: 1) screening by one or more expert systems; 2) selectively testing; 3) a time-sharing allocation of at least one processor; and 4) a screening module that includes one or more expert systems that use at least a portion of one or more equipment modules. But, again, the claims do not specify what screening should be done or how the expert system would perform such screening. They do not explain how to select the tests to run or even what tests to select from. They do not explain how the "time-sharing allocation" on a processor should be done. And they do not explain how the expert system works to screen for impairments or how such systems can be portioned out over one or more equipment modules. The claims fail in each of the four alleged inventive concepts to provide any details of how things work.
As a last resort, Vehicle Intelligence argued that the claims are necessarily rooted in computer technology. The Federal Circuit found two problems with this argument. First, the claims do not address a problem arising in the realm of computer networks because they are broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field testing a driver for sobriety. Second, the claims at issue do not recite faster, more accurate and reliable impairment testing than what was known in the prior art.
In this case, the '392 patent seemed to be doomed from the beginning due to lack of any detail provided in the specification for who, what, when, and how the invention works. The fact that the vague language in the claim lacked any support from the specification made the patent ineligibility determination by the Federal Circuit very easy to conclude.
One additional aspect not mentioned is that the claims arguably recite only human action, nothing of which is an inventive concept. While the first step recites "screening . . . by one or more expect systems . . . ," the step does not recite who or what performs the screening using the expert system. Again, with these claims, it is a theme that they are lacking in any detail and use of 35 U.S.C. § 101 to invalidate the claims appears proper.
As seen within much literature published on the subject of software claims and 35 U.S.C. § 101, one of the most fundamental steps that a patent drafter can do to help the patent survive § 101 challenges is to describe the invention in complete detail by not only describing an algorithm, but also, describing each function of the algorithm in detail as well as describing structural components of devices that perform each function of the algorithm. Vague and imprecise descriptions that may be thought to be crafty patent drafting resulting in broad claims that can cover many infringers, such as with the '392 patent "expert system decision module", are no longer sufficient.
An interesting note with this case is that the inventor, Kevin Roe, of the '392 patent is an attorney who also filed and prosecuted the application leading to the '392 patent, and further appears to have argued the appeal on behalf of Vehicle Intelligence.
Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC (Fed. Cir. 2015)
Panel: Circuit Judges Moore, Clvenger, and Reyna
Per curiam opinion