Claims Lacking Details Found to be Directed to Patent-Ineligible Subject Matter
By Joseph Herndon --
In the U.S. District Court for the District of Utah (Central Division), Polar filed a motion for judgment on the pleadings contending that certain claims of U.S. Patent No. 6,701,271 (owned by Icon Health & Fitness) are directed to patent-ineligible subject matter and are, therefore, invalid under 35 U.S.C. § 101.
The District Court granted the motion, and held that the asserted claims were directed to patent ineligible subject matter because they simply recite receiving data, determining an evaluation of the data, and providing a notification regarding the evaluation without reference to details for how such functions are performed. In addition, the '271 patent recites that conventional components may be used to perform such functions, and thus, the claims were found to be similar to those invalidated by the Federal Circuit in prior cases.
The '271 Patent
The '271 patent generally discloses a method and system for providing feedback that includes receiving data indicative of a physical characteristic of a first subject and a physical characteristic of a second subject, determining an evaluation of the data or course of action, and providing a notification regarding the evaluation or course of action to a device.
The '271 patent broadly defines the terms used to describe and to claim the disclosed method via examples. With respect to "physical characteristic," the '271 patent gives examples, stating that it might be or include the subject's heart rate, blood pressure, blood sugar level, posture, temperature, respiration rate, facial response or position, weight, height, galvanic skin response, pheromone emission, brain wave pattern or rhythm, odor, motion, etc., or a change in any one or more of them. For examples of "determining an evaluation," the '271 patent describes that it may be or include summarizing, tabulating, charting, collecting, aggregating, averaging, comparing, correlating, etc. some or all of the raw physical characteristic data received. For "determining a course of action," the '271 patent shows that the course of action can be either of an actor such as a teacher or entertainer, or of a subject such as a student or an audience member. Lastly, for examples of a "notification", the '271 patent describes that it may include an email message, instant message communication, electronic signal or other communication (e.g., radio or wireless transmission, FTP, HTTP or HTML transmission, XML feed), an audible sound, a visual display, a voice message, etc.
The '271 patent gives examples of the claimed invention by a person reading stories or giving a lecture. In those examples, the person is provided with feedback on the stories or on the parts of the lecture that the audience liked best, or on what story ending they might prefer. The '271 patent describes that a teacher may wish to know if the students in her class understand the material the teacher is discussing. A lecturer may wish to know what portions of his lecture the audience members find most interesting. Alternatively, the lecturer may want to have a better idea of when to take a break. An entertainer may wish to know what ending to provide to a story or song medley being presented to an audience.
The '271 patent discloses that no unique or specific hardware or software is needed to implement the disclosed method, stating, for example, that embodiments of the present invention are not limited to any specific combination of hardware and software. Thus, implementation of the disclosed method can be via conventional technology used conventionally.
All of the asserted claims depend directly or indirectly from claim 1, which reads:
1. A method for providing feedback, comprising:
receiving first data indicative of a physical characteristic of a first subject from a first device associated with said first subject and second data indicative of a physical characteristic of a second subject from a second device associated with said second subject;
determining an evaluation of said first data and said second data, wherein said evaluation is representative of a state of both said first subject and said second subject; and
providing a notification regarding said evaluation to a device.
The District Court determined that claim 1 exemplifies the general concept claimed by the asserted claims, and that it is further apparent that the general concept claimed by the asserted claims is providing and using feedback based upon data gathered from subjects, which amounts to (1) observing physical characteristic(s) of subjects, (2) evaluating the characteristic(s), and (3) providing a notification of the evaluation.
Patent-Eligible Subject Matter
The Court followed the two-step process to determine whether a claim recites patent-eligible subject matter set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012). The first step is to determine whether the claims at issue are directed to patent-ineligible concepts, such as laws of nature, natural phenomena, or abstract ideas. If the claims recite, for example, an abstract idea, the court proceeds with second step to determine if there are additional claim elements that introduce an inventive concept to the claim that is sufficient to transform the abstract idea into patent-eligible subject matter.
1. Step One: Are the claims directed to a patent-ineligible abstract idea?
Polar argued that the asserted claims recite the abstract idea of providing and using feedback based on data gathered from subjects. Initially, the District Court noted that humans have received and assessed information and thereafter provided feedback to one or more people from time immemorial. Today, the process of aggregating information and providing advice is much quicker than in the past due to, for example, the use of computers in the process. But, information gathering from particular sources through the use of sensors, absent uniqueness of a sensor, does not change the nature of the information gathering. As noted above, the '271 patent does not disclose any unique sensor or require any special hardware or programming.
The District Court agreed with Polar and summarized the abstract idea as three ordinary activities: (1) receiving data indicative of physical characteristics of two subjects; (2) evaluating the data, which can be as simple as collecting the received data; and (3) providing a notification regarding the evaluation, which can be as simple as displaying the received data.
Icon argued that the recitation of an evaluation and a notification render the asserted claims not abstract. The '271 patent, however, does not disclose such actions as being unique or novel. Instead, it discloses that these are common actions where an evaluation can be as simple as summarizing, tabulating, charting, or collecting information, and a notification according to the '271 patent can be as simple as an audible sound. Icon did not argue that the '271 patent teaches an improvement in how a computer functions, or any new sensor structure. Instead, Icon discussed the claims as using conventional sensors to collect objective data and a conventional computer to evaluate data, send notifications, and make determinations. These are the ordinary functions of sensors and a computer. Because the '271 patent claims are not directed to an improvement in how sensors sense or operate, or an improvement in how computers compute, the asserted claims are directed to an abstract idea.
2. Step Two: Do the claims recite additional elements sufficient to transform them into patent-eligible subject matter?
If a claim involves an abstract idea, the court next examines 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. The court looks at the elements both individually and as an ordered combination. In other words, if a claim recites an abstract idea, it must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.
Polar argued that the asserted claims do not improve an existing technological process or product and merely recite using conventional devices for their conventional purpose, e.g., sensors for sensing and displays for displaying.
Icon argued that the asserted claims recite an inventive concept and provided several different bases for its argument. First, Icon argued that as an ordered combination, the additional elements introduce inventive concepts. Icon contended that by putting a sensor that collects data indicative of a physical characteristic in communication with a remote, internet-accessible server that also receives similar data about one or more other subjects, the claims at issue enable the combined evaluation of more than one subject's objective physical-characteristics data, resulting in the provision of one or more options. Second, Icon also argued that the asserted claims teach a unique distributed architecture of databases and, for this reason, the asserted claims contain an inventive concept.
The District Court, however, found no inventive concept in the ordered combination of the claim limitations. Here, the '271 patent does not disclose and the asserted claims do not require anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information and, therefore, do not include an inventive concept of the application.
For this same reason, the District Court dismissed Icon's argument related to a unique architecture of databases. As noted above, the '271 patent discloses that no unique or specific hardware or software is needed to implement the disclosed method, stating, for example, that "embodiments of the present invention are not limited to any specific combination of hardware and software."
Icon did not argue or explain why this Court should consider sharing and comparing information either new or inventive. The asserted claims do not solve or claim to solve any internet or tech-centric problem.
Because the District Court concluded that the asserted claims are directed to an abstract idea and do not include an inventive concept that would render them patent-eligible, Polar's Motion for Judgment on the Pleadings was granted.
Memorandum Opinion & Order by District Judge Bruce S. Jenkins
As usual in recent section 101 jurisprudence, the court has omitted to. arguably falls within the eligible process category.
The mere fact that it is called a process arguably does not suffice. The steps as a whole produce no new and transformative result.
On the whole, lack of affirmative eligibility is a sounder ground of objection than mere abstraction and should be considered first.
Posted by: Paul Cole | March 31, 2017 at 06:50 AM
I should have said that the court should have considered whether the claimed subject matter arguably falls within the process category of section 101.
Posted by: Paul Cole | March 31, 2017 at 06:51 AM