The US Court of Appeals for the Federal Circuit, relying heavily on the specification of the asserted patent, found claims directed to an abstract idea of “wirelessly communicating status information about a system” as patent ineligible under 35 USC § 101. The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Case Nos. 18-2113, – 2228 (Fed. Cir. Aug. 21, 2019) (Chen, J).
The Chamberlain Group, Inc., (CGI) sued Techtronic Industries (TTI) for infringement of its patent relating to an apparatus and method for communicating information about the status of a movable barrier—for example, a garage door. TTI moved for a judgment as a matter of law, which was denied, while CGI’s motions for enhanced damages and attorneys’ fees were granted. At trial, the jury also found that the patent was not invalid and that TTI willfully infringed the patent. TTI appealed.
An exemplary claim from the asserted patent reads as follows:
A movable barrier operator comprising:
a controller having a plurality of potential operational status conditions …;
a movable barrier interface operably coupled to the controller;
a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:
corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and
comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.
The Federal Circuit applied the two-step framework for assessing whether subject matter is ineligible for patent protection as an abstract idea set forth in Alice v. CLS Bank.
Under step one of the Alice framework, the Federal Circuit found the claims to be directed towards an abstract idea, relying on the patent specification in so doing: “The only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time.” Thus, the Court concluded that the claims “merely recite a system that communicates status information, in the same ‘well understood’ manner that wireless transmissions have always occurred.”
Turning to step two of the Alice framework, the Federal Circuit looked at the claim elements to determine whether they identified an “inventive concept” in the application of the ineligible subject matter to which the claim is directed.
CGI had argued that “there is no evidence in the record” that the claimed garage door opener “that includes an integrated controller and a wireless transmitter to transmit a status signal” was “well-understood, routine and conventional to a skilled artisan.” The Federal Circuit rejected that argument, noting that
The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan . . . but rather . . . (1) whether each of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and (2) whether all of the steps “as an ordered combination add nothing to the laws of nature that is not already present when the steps are considered separately.” Mayo.
The Federal Circuit explained that “the specification . . . makes clear that transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology . . . Yet wireless transmission is the only aspect of the claims that CGI points to as allegedly inventive over the prior art . . .Wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.”