In The Chamberlain Group, Inc. v. Techtronic Industries Co.,1 the Federal Circuit weighed in on the type of subject matter that can be characterized as an “abstract idea” and, thus, not eligible for patent protection. Specifically, the Federal Circuit found that even when patent claims recite physical, non-computer claim elements, the invention may be directed to an abstract idea and, therefore, invalid under 35 U.S.C. § 101.2
Chamberlain is a case in a series of recent Federal Circuit opinions that seem to vacillate on what qualifies as patentable subject matter under § 101. Historically, courts have defined patent-eligible subject matter fairly expansively. The Supreme Court once described “anything under the sun that is made by man” as worthy of patent protection, so long as statutory novelty and non-obviousness standards were met.3 However, even under this rather generous standard, there were—and still are—three categories that preclude patent protection—laws of nature, physical phenomena, and abstract ideas.
In 2014, the Supreme Court formalized a two-step analysis for determining whether a claim directed to statutory subject matter is, or is not, eligible subject matter under § 101.4 In step one of the analysis, a court, or patent examiner, must determine whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea. If step one is answered in the affirmative, the court or examiner then asks whether the claim recites additional elements that amount to “significantly more” than the named exception. If all of the claim limitations, taken as a whole, meet this standard, then the claims will be eligible for patent protection. Otherwise, the claims will fail for reciting patent-ineligible subject matter.
More recently, the USPTO has issued additional guidance on § 101 eligibility. In accordance with the USPTO guidelines, claims that apply the named exception to a practical application may not be abstract under step one and, thus, may be eligible for patent protection. The court’s analysis in Chamberlain seems to run counter to this guidance, further clouding what is eligible under § 101.
In Chamberlain, the Federal Circuit considered whether a garage door opener with a wireless sensor system was an abstract idea under step one of the above analysis. The patent owner, Chamberlain Group (CGI), patented a garage door opening system including a controller and a garage door mechanism (movable barrier interface).5 The system also includes a wireless transmitter that communicates a signal including a door state (“open” or “closed”) and a "relatively" unique ID that identifies the system.6 The system can be used to provide a real-time garage door status to a device display or home security system.
CGI sued the defendant, Techtronic Industries (TTI), for allegedly infringing U.S. Patent 7,224,275 (the ’275 patent). TTI moved to invalidate the ’275 patent on the grounds that the claims were directed to patent-ineligible subject matter. The district court denied TTI’s motion based on its characterization of the ’275 patent, which the district court described as being directed to “garage door openers that wirelessly transmit status information.”7 The district court ultimately characterized the ’275 patent as disclosing an improvement in garage door opening technology and, therefore, not abstract.8
The Federal Circuit’s Decision
On appeal, the Federal Circuit reversed the district court and found that the ’275 claims were, in fact, directed to a patent-ineligible abstract idea. Instead of following the district court’s characterization of the claims, the Federal Circuit largely ignored the physical elements of the system and reinterpreted the claims as merely “wirelessly communicating status information about a system” and abstract under step one of the two-step test.9
Even though the court noted the inclusion of physical structures in the claims, such as a garage door opening controller and the garage door mechanism, the court noted that the ’275 specification described these physical structures as conventional and well-understood in the art. In fact, the court found that the only element that the specification of the ’275 patent did not consider conventional was the wireless transmission of status information, which the court characterized as the abstract concept.10
Under step two of the two-step test, the court parsed the claim for an inventive concept, which may be used to show that the claim limitations adds something transformative to the natural law or abstract idea. The court reasoned that the wireless communication “cannot be the inventive concept because it is the abstract idea that the claims are directed to."11 The court also found that the other claim elements were conventional at the time of the patent and were not sufficient to transform the abstract idea of wireless communication into a patent-eligible claim.12
While it seems that the court could have invalidated the patent under an obviousness analysis, the claims were instead held invalid as being directed to ineligible subject matter under § 101.
For the last several years, courts have been using § 101 to invalidate software patents directed to what has been deemed “ordinary human activity.” Previous cases have found that common computer hardware terms like “computer processor” and “memory” cannot transform an otherwise abstract concept into patentable subject matter.
However, Chamberlain is one of the first precedential cases to invalidate a non-software apparatus patent for being directed to an abstract idea. The reasoning in Chamberlain also runs counter to USPTO guidance that relies on the “practical application” of a concept to determine whether the claimed invention is abstract. Extending the reasoning in Chamberlain to a variety of other patents, both hardware- and software-related, could result in a major shift in what can be patented in the U.S.
That said, it is also likely that the holding in Chamberlain will be limited to the somewhat unique facts of the case. In Chamberlain, the court found that the specification expressly acknowledged that nearly all of the hardware components were well known, which implies that the specification failed to describe the invention in a more complete or holistic manner. While rarely good practice in ordinary circumstances, narrowly tailoring the novel aspects of an invention in the specification may now leave a patent open to challenges under § 101, in addition to the more customary challenges under novelty and obviousness.