• In a battle over EV charging station technology, a patent defendant has argued that the plaintiff’s technology is ineligible for patent protection and that the entire case should be dismissed from federal court.

Electric vehicle (EV) charging station provider SemaConnect, Inc., has requested that a patent lawsuit be dismissed because the asserted patents are invalid. The patents are owned by rival ChargePoint, Inc., an EV charging company that appears to have brought the lawsuit against SemaConnect after being shut out of a major installation contract. The contract was offered by Electrify America, the VW subsidiary that has pledged to spend $2 billion on EV infrastructure. You can find our earlier post on this case here.

Alleging a plaintiff’s patents are invalid is a common defense strategy for defendants in patent litigation. Here, SemaConnect asserts that ChargePoint’s patents are invalid because the inventions claimed in the patents are ineligible for patent protection. Patent eligibility protection has been a contentious area of patent law since a Supreme Court decision in 2014 modified the framework for evaluating whether an invention may be patented. The Supreme Court’s modification made it easier to demonstrate that an invention is ineligible for a patent, therefore leading many defendants to challenge patents in the manner that SemaConnect has now challenged the ChargePoint patents in this case. For example, motions to dismiss patent lawsuits due to patent ineligibility rose fivefold in the aftermath of the Supreme Court’s modification (i.e. between 2014 and 2016):

 

Although inventors are generally entitled to patent their inventions, “laws of nature, natural phenomena, and abstract ideas” may not be patented. This long-standing rule in patent law is designed to prevent patent monopolies on these areas of technology such that a patent owner cannot broadly preempt an entire field of technology. The Supreme Court has laid out a two-step process for evaluating claimed inventions for patent eligibility:

(1) Determine whether the entire claimed invention is merely an abstract idea; and

(2) If the entire claimed invention is merely an abstract idea, determine whether the claimed invention includes additional elements that result in a technical improvement over existing technology.

SemaConnect has argued in court that ChargePoint’s four asserted patents each fail this test and are therefore ineligible for patent protection. If the court agrees, ChargePoint’s patents will be invalidated and the patent lawsuit will be dismissed.

By federal litigation standards this case is moving at lightning speed. In a case not yet two months old, the court has already held a hearing on and denied ChargePoint’s request for an emergency injunction preventing SemaConnect from executing its contract with Electrify America. Now the parties have fully briefed SemaConnect’s request to dismiss the entire case for patent invalidity. A decision on that request is expected from the court shortly.