“Claim 1 recites numerous physical electrical components, a control device (on/off switch), transceiver to communicate with a remote server and a controller to activate the on/off switch based on communications from the server…. If claim 1 is not a machine, I don’t know what is.” – Russell Slifer, writing on ChargePoint case

The U.S. Supreme Court today denied two petitions for certiorari filed by Trading Technologies and one by ChargePoint, Inc. asking the Court to review their cases related to the patent eligibility of their inventions. Trading Technologies’ inventions relate to graphical user interface tools, while ChargePoint’s invention is for a vehicle charging station.

Conflicting Precedent

Trading Technologies’ October 2019 petition (19-522) asked: 1) “whether computer-implemented inventions that provide useful user functionality but do not improve the basic functions of the computer itself are categorically ineligible for patent protection,” and 2) whether the Court should overrule its “abstract idea” exception to patent eligibility.

The case involved U.S. Patent Nos. 7,685,055 (the “’055 patent”); 7,693,768 (the “’768 patent”); and 7,725,382 (the “’382 patent”). The ‘768 and ‘382 patents are continuations from, share the same specification as, and have claims that closely track the claims of U.S. Patent No. 6,766,304 and U.S. Patent No. 6,772,132, which were found by the CAFC in February of 2019 to be not subject to covered business method review (CBM) because the claims were directed to technological inventions “under any reasonable meaning of that term.”

Trading Technologies further argued to the Supreme Court that “while one line of Federal Circuit decisions holds computer-implemented inventions to be ineligible if they do not make hardware-like improvements to computers’ basic functions, another line holds the opposite. Several decisions have even upheld patent protection for interactive graphical interfaces, in plain and open conflict with the decision below.”

The questions presented in the company’s earlier petition (19-353) were identical.

Patent Law Swallowed

On October 21, ChargePoint, Inc., asked the Court to address the following:

Whether a patent claim to a new and useful improvement to a machine or process may be patent eligible even when it “involves” or incorporates an abstract idea; and Whether the Court should reevaluate the atextual exception to 35 U.S.C. §101.

In early 2019, the Federal Circuit, in reviewing the claimed vehicle charging apparatus, found the invention to be ineligible for a patent because it was an abstract idea. The court held that “the broad claim language would cover any mechanism for implementing network communication on a charging station, thus preempting the entire industry’s ability to use networked charging stations. This confirms that claim 1 is indeed ‘directed to’ the abstract idea of communication over a network to interact with network-attached devices.”

ChargePoint argued in its petition that certiorari was warranted because the CAFC’s decision in its case conflicted with Diamond v. Diehr. In Diehr, the patentee claimed a rubber curing process with one of the steps including an abstract mathematical algorithm, and the Supreme Court nonetheless found the claims patent eligible. According to the Court, the claims as a whole simply incorporated an abstract idea, a mathematical formula, and were not aimed at patenting the mathematical formula itself. ChargePoint further argued that the Court must reconsider the implicit non-statutory exception to Section 101 to curb the federal courts’ invalidation of patents “at break-neck speed,” outside of the scope of Congressional intent.

Russell Slifer, Principal at Schwegman Lundberg & Woessner and the former Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director of the United States Patent and Trademark Office, writing on the ChargePoint case after the Federal Circuit’s ruling, argued that “the ChargePoint decision was the very case that the Supreme Court in Alice Corp. v. CLS Bank warned would swallow all of patent law,” and that it effectively overruled and made moot the USPTO’s 2019 patent eligibility guidance.

Slifer further lamented the Chargepoint court’s contention that the claim language preempted the industry’s ability to use networked charging stations:

As an electrical engineer and patent attorney, I am truly perplexed by this statement. Claim 1 recites numerous physical electrical components, a control device (on/off switch), transceiver to communicate with a remote server and a controller to activate the on/off switch based on communications from the server. The configuration of the components may be anticipated or obvious under the patent statute based on prior art, but they are anything but abstract and do not preempt all ways of charging a vehicle using a network. Congress specifically stated in 35 U.S.C. 101 that there are four statutory categories of patentable subject matter: process, machine, manufacture, or composition of matter. If claim 1 is not a machine, I don’t know what is.

Hope Wanes

The denials are not surprising following the High Court’s refusal to allow a number of other petitions dealing with Section 101 earlier this month, including Athena Diagnostics v. Mayo Collaborative Services and HP Inc. v. Berkheimer. Athena was thought to have the best chance of being granted, especially after the United States Office of the Solicitor General (SG) in December weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

According to PatentlyO’s Dennis Crouch, there are now only a few other patent petitions remaining on the Supreme Court’s docket. Thryv v. Click-to-Call was argued in December and is awaiting a decision. That case asks whether 35 U.S.C. § 314(d)— which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable—permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b), which states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition.

With little hope now remaining for assistance from the Supreme Court on patent eligibility law, the ball seems to be in Congress’ court. However, Congress is said to be stalled for the time being on Section 101 reform, and instead appears to be focusing more on copyright issues so far this term.

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