Few subjects have drawn as much interest among patent stakeholders and practitioners as understanding the framework used to determine a patent claim’s eligibility. Courts continue to address different factual situations in applying the two-step test for patent eligibility under 35 USC § 101 that the Supreme Court set out in Alice Corp. Pty. Ltd. V. CLS Bank Int’l., 537 U.S. 208, 217 (2014).Courts generally ask whether a claim is directed to patent eligible subject matter or a patent-ineligible concept, such as an abstract idea or natural phenomenon. If a claim is drawn to a patent ineligible concept, the court asks whether the claim includes an inventive concept or is simply an abstract idea without significantly more.
So, should a court disregard “well-understood, routine, and conventional” components of a claimed device when deciding whether a claim is directed to a patent-ineligible “natural phenomenon” under the first step of the Alice test?
Not according to the United States District Court for the Northern District of Illinois in FYF-JB LLC v. Pet Factory, Inc., which denied a motion to dismiss a patent infringement suit making this argument in the context of claims covering a dog chew toy. In Pet Factory, the accused infringer of U.S. Patent No. 9,681,643 (the “’643 Patent,” entitled “Tug Toy”), Pet Factory, Inc., argued that claims directed to a dog chew toy that makes noise when tugged or stretched were patent ineligible under § 101. Claim 1, which is one of several asserted claims, reads as follows:
1. A tug toy comprising:
at least one gripping member and a central portion, wherein said at least one gripping member is attached to said central portion, and
wherein said central portion further includes a noise maker,
wherein said at least one gripping member is adapted to transmit force to said central portion and
wherein said force comprises a first lateral force directed away from the central portion in the direction of a first gripping member.
According to Pet Factory, even though the claims of the ‘643 Patent recited tangible chew toy devices, the devices’ components were “well-understood, routine and conventional.” Aside from these tangible components, Pet Factory argued that the claims recite nothing more than the natural phenomenon of “force and its direction” for purposes of Step 1 of the Alice inquiry. As a result, Pet Factory argued the patent infringement complaint against it brought by patent holder FYF-JB LLC should be dismissed.
The court disagreed, pointing out that whether components of a claimed device are “well-understood, routine and conventional” is not relevant to the determination under Step 1 of Alice of whether the claims are directed to a patent-ineligible concept. The court noted that “the ‘well-understood, routine, and conventional’ language that Pet Factory cites comes from Alice and Mayo in the context of describing under step two of the Alice test why the addition of routine steps does not transform an otherwise unpatentable method into a patent-eligible application.” Because the claims were “anchored in the tangible form of a tug toy,” the court found the claims patent eligible, although it noted that simply reciting “concrete, tangible components is not necessarily enough to escape the reach of Alice step one.” The court apparently found persuasive cases cited by the patent holder which similarly rejected the notion that patents directed to circular swings that could move in any direction simply involved the natural phenomenon of a pendulum, and thus patent ineligible. Similarly, the court found the claims of the ‘643 Patent “involve force but are not directed to force itself.” They “describe the features of the tug toy, and how the apparatus is designed to transmit force and activate the noise maker.”
The court’s interpretation seems to be that tying a natural phenomenon to the operation of a claimed device is different from claiming the phenomenon itself. This decision suggests that whether a claim’s components are commonplace is not likely to be a relevant consideration under the analysis in Step 1 of Alice. Practitioners also should understand whether their claims are directed to the components of a claimed device, which are free to operate according to principles of a natural phenomenon, or simply to the operation of the phenomenon itself.