By Michael Borella --
Every day, millions of people are subjected to a frustrating experience -- finding a place to park their automobiles. Whether at the train station, the sports stadium, a festival, or a popular restaurant, circulating through parking lots is not an enjoyable way to spend either your work day or leisure time. The fundamental issue is that a driver has no idea of parking lot occupancy beyond what he or she can see. Thus, instead of making a beeline to the nearest open spot, the driver is forced (along with other drivers) to seek out such a spot in semi-random fashion. Locating parking boils down to a classic resource scheduling problem -- but it is one that technology can solve.
The Invention and the Dispute
U.S. Patent Nos. 6,501,391 and 6,750,786 disclose such a solution. Particularly:
A portable wireless remote graphical display device structured and arranged to access the Internet from home, office, vehicle, or any other location comprising a specific software application on the portable wireless remote graphical display device for commanding a server at a parking lot or remote location to transmit parking lot occupancy data corresponding to one or more parking lots over the Internet to the portable wireless remote graphical display device and for receiving and displaying the parking lot occupancy data on the portable wireless remote graphical display device as a real-time representation of the parking lot indicating vacant parking spaces within the parking lot.
Both were filed in 1999, well before smartphones with GPS, or the parking spot location / reservation apps that we enjoy today.
In late 2015, patent owner Open Parking brought an infringement action against Parkme in the Western District of Pennsylvania. Parkme responded by contending that both patents were directed to ineligible subject matter under 35 U.S.C. § 101, and filed a 12(b)(6) motion to dismiss for failure to state a claim on which relief can be granted.
Claim 1 of the '786 patent was deemed representative. It recites:
A parking system comprising:
a wireless communications device capable of accessing the Internet; and
a software application for receiving parking data transmitted over the Internet to the wireless communications device,
wherein the parking data can be rendered by the wireless communications device as a substantially real-time representation indicating an occupancy condition of an available parking lot, and
the occupancy condition changes according to presence and absence of vacant parking spaces within the available parking lot.
Under § 101, patent claims can be invalidated if they fail to meet the eligibility requirements set forth by the Supreme Court in Alice Corp. v. CLS Bank Int'l. Of notable importance is the two-prong test provided therein. First, one must determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. Notably, generic computer implementation of an otherwise abstract process does not qualify as "significantly more."
Prong One of Alice
After a discussion of whether claim construction was necessary in order to evaluate the claims under § 101 (it wasn't), the Court applied prong one of the Alice test. In doing so, it discussed two recent Federal Circuit § 101 cases: Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. AV Automotive, L.L.C.
Quoting the former, the Court noted that "a relevant inquiry at step one is to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Particularly, the invention in Enfish was directed to "an innovative logical model for a computer database, i.e., a model of data for a computer database explaining how the various elements of information are related to one another," thus providing a "specific improvement in the way computers operate."
On the other hand, the Court observed that the invention in TLI was "directed to the abstract idea of classifying and storing digital images in an organized manner and failed to add an inventive concept sufficient to confer patent eligibility." This invention was abstract "despite requiring tangible components such as a telephone unit and a server," because these "physical devices merely provided a generic environment in which to carry out the abstract idea."
A distinction between Enfish and TLI, not made by the Court but worth keeping in mind, is whether the claimed invention involves a technological improvement or uses existing technology. Enfish's improved database format is a new technological tool that can be used by any number of higher-level software applications. In contrast, TLI's image classification and storage technique required the use of technological tools (e.g., the telephone unit and server), but in the view of the Federal Circuit, did not create or improve on any such technologies.
A similar distinction can be made between a previous pair of Federal Circuit cases. In Ultramercial v. Hulu, claims directed to making online users watch an ad before being able to watch a video of their choosing was deemed ineligible under § 101. In DDR Holdings v. Hotels.com, claims directed to changing how a web server operates so that it can incorporate visual aspects of two different web sites was found to satisfy the requirements of § 101. Again, the difference between these two cases is that Ultramercial merely made use of existing technology (e.g., servers and the Internet), whereas DDR improved the operation of a specific technology.
When viewed in this fashion, these four cases provide a distinction between eligible and ineligible claims. While this distinction is certainly debatable (and there are those who would argue that the inventions of all four cases should have been eligible or ineligible), the Federal Circuit has provided us with a rough roadmap to patent-eligibility post-Alice. But as we will see, this roadmap is still fraught with hazard.
The Court considered the arguments of the parties. Parkme contended that the claims amounted to no more than an abstract idea for "shuffling data from one place to another . . . that could be completed with pencil and paper." Open Parking countered that the claims recited "a new and useful result of allowing a commuter to use an open parking mobile app on a smartphone to remotely view a changing occupancy condition of a parking lot when commuting and before arrival so that the commuter can readily locate an available parking space or decide to search for parking elsewhere."
The Court noted that "the 'pen and paper' test is a valid method to evaluate abstraction," as method steps that can be performed in the human mind or with pen and paper are usually a hallmark of an abstract idea. While the Court concluded that "the rendering of the parking lot occupancy [in] 'substantially real time' could not be performed by a parking lot attendant handing out maps," but "the 'occupancy condition' of a parking lot, i.e. data about whether there are any open spots, could be rendered by humans using a pen and paper."
Here, the Court, probably prompted by Parkme, undertook some rather detailed speculation:
Perhaps there is an attendant at the gate who looks around the lot and writes the number of open spaces on a chalkboard for passersby to see. Or there could be a simple "vacancy/no vacancy" sign outside of a lot, or a "real time" electronic sign showing the then-existing number of open spaces, based on the entry/exit of cars. These examples are means to the same end: transmitting to commuters whether there are any open spots in a parking lot, via a graphical display and in substantially real time . . . . Information about open parking spaces has long been broadcast to drivers who cannot actually see the open spaces. For example, in many major cities, parking garages in which spots are shielded from view have displays on the outside indicating if (and in some cases how many) spots are vacant.
As a result, the Court concluded that "what the patents are really trying to get at is the transmission of substantially real time data of whether there are any open parking spaces in a given lot." Thus, "the patents are aimed at moving data (open parking spots or not, and maybe where they are) from one place (the parking lot) to another (the driver's location)." Consequently, the Court found the claims to be abstract.
Prong Two of Alice
Turning to prong two, the Court looked for an inventive concept in the claims -- "additional features that amount to more than well-understood, routine, conventional activity." Open Parking took the position that the claims are "limited to specific emerging handheld wireless devices capable of communications including Internet access," require a computer, and involve only the transmission of parking data rather than generic data -- and were therefore significantly more than just an abstract idea.
The Court disagreed. Citing TLI, the Court concluded that the invention involved "software . . . being executed on a generic computer," and did not solve a problem unique to the Internet. Particularly:
The seemingly ubiquitous problem of finding open parking spaces during the busy morning rush necessarily exists outside of the Internet, and outside computers altogether for that matter. Transmitting that data over the Internet to mobile devices might be useful, but it does not override the routine and conventional sequence of events pertaining to finding a parking space. The process is still (1) look for open space, (2) drive to open space, (3) park in open space. With these patents, the driver merely looks to her mobile device rather than through her windshield.
Thus, the Court found that the recitation of this process using "basic computer functions" is no more than an abstract idea, and therefore the claims are invalid.
Conclusion
This case, like many that involve § 101 rulings, is certainly open to criticism. Particularly, when characterizing the invention, the Court did not focus on the ability of drivers to use the invention to travel directly to an open spot, instead of seeking one out in a more iterative fashion. In fact, the invention could be used before one even begins driving, which is something that is unique to the Internet and cannot be carried out with pen and paper. Most likely, the broadness of the representative claim convinced the Court to perform the eligibility analysis at a higher level. Perhaps a more carefully drafted and narrower claim might have won the day.
Nonetheless, cases such as this one are helpful in understanding how district courts are viewing the Enfish / TLI and Ultramercial / DDR dichotomies. Such an understanding can be instrumental for patentees to navigate the § 101 paths of the U.S. Patent and Trademark Office as well as our court system.
The recipe for jugged hare famously contains the direction: First catch your hare".
The claims in issue here do not give the slightest hint as to how the parking data is to be collected and integrated into the graphical display device.
There is "a software application for receiving parking data transmitted over the Internet to the wireless communications device". Presumably the parking data is provided by the fairies, and a group of computer-literate elves have written the software application without revealing too much about the magic which makes it work.
If there was a problem in creating the claimed parking system, that is not apparent from either patent specification.
If this case goes up on appeal what are the Federal Circuit judges to think of us?
Posted by: Paul Cole | July 08, 2016 at 12:06 PM
Sure, the claims are broad and the specification is thin. But, according to the statute, that's a job for 112, not 101. Instead, the 101 analysis results in the vigorous handwaving we see here from the parties and the court.
Posted by: Mike Borella | July 08, 2016 at 12:15 PM
"The fundamental issue is that a driver has no idea of parking lot occupancy beyond what he or she can see."
Let's set aside the laughable wrongness of this statement ("no idea"<-- LOL) for a moment.
If this "fundamental issue" is the "technical" problem to be solved, what's the non-obvious technical solution? Surely it's not "get more data and use it."
Posted by: The Memory Motel | July 08, 2016 at 01:08 PM
One cannot help but wonder if the "famous" IBM airplane toilet parking availability patent 6,329,919 was considered as prior art?
Posted by: Paul F. Morgan | July 08, 2016 at 02:13 PM
@ Mike Borella
Anyone who knows me will be well aware of the efforts that I have made to help develop a more sensible interpretation of Section 101.
But for our part we have to draft sensible specifications and claims, not over-optimistic ones. Section 101, it seems to me demands a plausible invention on the fact of the document filed at the USPTO. I have not found anything either in the quoted claims or in the two rather thins specifications which gives anything to hang your hat on in this regard. There are cases which the judges reasonably want to get off their docket, and this, it seems to me, was one of them.
Posted by: Paul Cole | July 08, 2016 at 03:01 PM
Mr. Cole,
"Reasonably get off their docket" does not, and should not, mean that law is applied inappropriately, no matter how thin, or lacking on the face something is.
I believe the part of law that you may want to consider would be 35 USC 112. 101 is intended to be a wide open gate. Do you fit at least one of the statutory categories? Does the claimed invention have the right type of utility?
That
Is
It
Posted by: skeptical | July 08, 2016 at 05:39 PM
In a perfect world this would have been invalidated under 103 and maybe 112.
But the patent bar has for too long abused the ladder of abstraction, the now the supreme Court is causing a reckoning.
It's unfair but it's not unjust.
Posted by: Alex | July 08, 2016 at 06:48 PM
Alex,
Your view is the ultimate "ends justify the means."
I really do hope that you are not an attorney or in any other way involved with the law.
Practically ALL claims of ANY worth use (abuse...? that's an unsubstantiated, personal and as used here meaningless word) the ladders of abstraction. There might - just might - be a very very very tiny fraction of claims written in exacting picture form that do not.
Posted by: skeptical | July 09, 2016 at 07:22 AM
Sure, I'll play again.
Alice not only fails to bifurcate eligibility and patentability, mirroring the structure of the patent act, but the doctrine mashes them so subjectively that most cases essentially turn on a judge's whim, including CAFC judges, no two of whom see Alice was working in the same way.
This is inevitable when your statutory eligibility criteria on their face allow for abstract inventions, but your common law does not because having unlimited patents on abstractions is a fool's errand and unconstitutional at any scale.
Without some means of distinguishing eligible abstractions from ineligible abstractions, the process will remain intolerably subjective at the USPTO and in the courts at all levels.
Abstraction manifests in separate ways at eligibility and patentability. That means at a minimum that two tests are needed.
In the former, abstraction should be found in the intrinsic nature of the invention itself (e.g. is it tangible or is it information of some kind? If information, what is the nature of the information?) Some information inventions are new, useful, and fully described.
What to do about them?
At patentability, it needs to be a multi-pronged test of 102/103/112 to see if the purported invention is actually the idea of an invention, or a mere direct transfer of an invention to a new technical environment. The Alice test is well-suited for this role.
In the present case, the patent should fail on both counts; the result of the method is information (about parking spaces) and the claims are statements of a problem but not a fully described, buildable solution to the problem that a PHOSITA could use as a teaching.
But the question is unanswered; how to distinguish eligibility of those information inventions that should be patent-eligible despite their abstraction?
I answer in depth here:
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2709289
PS the answer surely can't be "technical solutions to technical problems" or "improving the function of computers" which are both also essentially Rorschach tests.
Posted by: Martin Snyder | July 09, 2016 at 12:47 PM
Sounds like your livelihood is built on abusing the ladders of abstraction and the patent system. I'll weep for you when I'm done weeping for the wealthy victims of the french revolution.
Posted by: Alex | July 09, 2016 at 12:58 PM
What comes to mind is something from another blog, namely MM's caustic remarks about the (non)patentability of an "invention" that amounts to the mere exhortation to "Do it on the internet".
Why? Because I do not recall ever having seen a clearer case of such a claim.
Finding a hole in a parking lot is an age-old problem. Wouldn't it be nice to have a little man in a tower crane overlooking the lot, directing you via a radio link to the empty space? Suppose you claimed that as your "invention". Would you feel aggrieved, if you were turned down? Wasn't it much earlier than 1999 that radio stations had spotter planes reporting on rush-hour traffic conditions?
What does the subject matter claimed here add to what was egregiously old, other than a non-specific exhortation to "Do it on the internet"?
Or, looking at it another way, the task of "finding a hole" is ancient, in every technical field under the sun. So why should the specification of one particular field, namely "parking slots" lead anybody to suppose that the restriction to this particular field is patentable?
Posted by: MaxDrei | July 09, 2016 at 03:23 PM
One point that is lost with MaxDrei's reference to someone else's argument is that eligibility and "egregiously old" are different LEGAL concepts.
No amount of "exhortations" changes a 102/103 argument into a 101 argument.
Not paying attention to this difference in law does not make that difference go away.
Posted by: skeptical | July 09, 2016 at 08:01 PM
Dogberry (oops, sorry, I mean "Skeptical")makes the tired old point, that the USA ought to do eligibility absolutely (like the EPO does) rather than relative to the art (as England does under the same pan-European eligibility law). England asserts that the EPO's "absolute" view of eligibility is "intellectually dishonest". I note that SCOTUS agrees with the judges in England, notwithstanding numerous voices urging that the EPO's absolute view of eligibility is not dishonest at all but is in fact more robust and rigorous, and so ought to be followed, also in the USA.
At least Europe doesn't have the burden of interpreting a patent statute that in its eligibility section recites the word "new". That, for me, hinders rather than helps SCOTUS, even if it wanted to adopt an absolute test of eligibility, one that eschews any comparison of the claimed subject matter with the state of the art.
Why does England think the EPO absolute view "dishonest"? I suspect because the eligibility section of the EPC includes the word "invention" (and so only claims in which an "inventive concept" can be inferred can be taken as eligible. But (SCOTUS watchers) does that thinking really stand up to scrutiny? I think it is well-established law that when a patent statute recites the word "invention" it is implicit that the term is to be taken to include within its ambit any "alleged invention".
Posted by: MaxDrei | July 10, 2016 at 06:00 AM
Alex,
Your reply is nothing but ad hominem and an incorrect assumption that I have my beliefs based on my own pocketbook.
Such is simply not true.
I weep for you that you have no other response but to suggest that my views are so selfishly motivated. Clearly, you do not appreciate the positive benefits that accrue from a strong patent system and my informing you that I love my work because I help others protect their innovations would be lost on you.
Instead of reaching into the gutter, perhaps you would like to take another opportunity to respond to my post in a different manner.
Of that, well, I remain...
Posted by: skeptical | July 10, 2016 at 06:48 AM
MaxDrei,
First, not sure what the reference of "dogberry" is, but it certainly is not appropriate for this forum.
Second, "tired old point" is NOT a tired point. Clarity in law is essential. I made NO such international comparisons - I strictly presented how law in the sovereign of the US runs. If you do not know that, then this is a great time for you to come to understand this.
Third, it is not up to the Justices to write patent law in the United States. That you may feel that they have some proclivity is simply not germane to how the US law has been actually written.
Fourth, understanding the presence of "new" in the 101 section has been provided for in the Congressional record for the Act of 1952. You appear to show yet another lack of understanding of our law.
NONE of these points are new (and rest assured, I am more than certain that you have been exposed to them). I can only take it that you are not approaching this with a mind open to learning, but rather, with a mind seeking to place your desired viewpoint on US jurisprudence.
Instead of the term "dogberry," you would be far better off paying attention to those who know and understand US jurisprudence.
Posted by: skeptical | July 10, 2016 at 10:53 AM
"A parking system comprising:
***** a wireless communications device capable of accessing the Internet [I think such devices have been available in high streets for more than a decade]; and
***** an application for receiving parking data transmitted over the Internet to the wireless communications device [but which it appears contains no significant technical features, and about which I chose to specify nothing new or interesting],
***** wherein the parking data can be rendered by the wireless communications device as a substantially real-time representation indicating an occupancy condition of an available parking lot [how does this happen? by magic? is Merlin around?? Or by technical apparatus, and if so what technical features have been built in. The rest is silence, as Hamlet said.], and
***** the occupancy condition changes according to presence and absence of vacant parking spaces within the available parking lot [I think this happens whenever people enter or leave a car park].
So should ANY judge take a claim of this scope seriously? And does it really matter if the claim is held ineligible under 101, 103 or 112? It is very arguably over-broad and invalid on the face of the document.
Posted by: Paul Cole | July 11, 2016 at 06:51 AM
Mr. Cole,
Quite simply and rather emphatically, yes it really does matter the means used to get to any ends in the law.
Quite frankly, I am rather shocked at your apparent cavalier attitude here.
This is not a place for sloppy thinking.
Posted by: skeptical | July 11, 2016 at 07:38 AM
Paul, I'm surprised by your question "does it really matter if the claim is held ineligible under 101, 103 or 112?" It most definitely matters. And you should know better. So I'm going to guess that it wasn't the real Paul Cole who wrote that comment.
Posted by: Atari Man | July 11, 2016 at 08:09 AM
Ha now that's interesting... Maybe the real Paul Cole recognizes that a million to two million bucks to get to an inevitable end is actually a means that does matter, while scholastic fealty to obsolete legalisms matters somewhat less....
There is clearly needed a Markman-like procedure early in cases to review patentibilty matters of law beyond construction of the terms.
Posted by: Martin Snyder | July 11, 2016 at 12:55 PM
If anyone can tell me why the combination of features in the claim above quoted amounts to more than a mere idea devoid of transformative supporting detail, I will be happy to retract what I have just said.
However, I am unable to see sufficient to qualify it as a machine or manufacture.
Therefore I cannot see a way of gainsaying the 101 objection. There comes a level of vacuousness where a judge is just going to throw a claim out.
In the old days of electromechanical calculators you could not have got a patent for such a calculator with a cube root key. You would have to disclose a suitable calculation mechanism and put the essentials of the mechanism into the claim. Otherwise it would be just a bright idea and nothing more, just like the claim here.
Posted by: Paul Cole | July 11, 2016 at 03:16 PM
@ Paul F. Morgan
You are completely right about the "famous" IBM airplane toilet availability patent 6,329,919. What is AMAZING is that it took no less than FOUR people to think up this difficult concept.
Posted by: Paul Cole | July 11, 2016 at 04:02 PM
Mr. Cole "does not see," so he feels it is "ok" for sloppy legal thinking.
Well anyone can have an opinion, no matter how badly that deviates from critical legal thinking and if Mr. Cole wants to jump on that horse, then "giddie up."
Of course, ANY semblance of Mr. Cole beseeching ANYONE else to ever employ critical thinking ALSO goes "giddie up" and rides into the sunset.
What? You thought that such careless thinking came for free?
Posted by: skeptical | July 11, 2016 at 07:36 PM