By Jo Dale Carothers
IP Law Blog
Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have. No matter how hard I try to search my brain’s archives, I really don’t remember whether I closed the garage door even though I close it 99.9% of the time! In that moment, you wish there was a way to check that doesn’t require turning around and going back home to see if you really left the house wide open for anyone to walk in.
Well The Chamberlain Group, Inc. (“Chamberlain”) thought it had patented an invention that could help with this type of problem—a garage door opener that wirelessly transmits information such as whether the door is open or closed. See U.S. Patent No. 7,224,275 (the “’275 Patent”). Specifically, the patent “relates to an apparatus and method for communicating information about the status of a movable barrier, for example, a garage door.”
Chamberlain sued Techtronics Industries Co. and others for infringing the ‘275 patent. See The Chamberlain Group, Inc. v. Techtronic Industries Co., et al. The jury found the patent was enforceable and had been willfully infringed. The district judge denied judgment as a matter of law for defendants determining that the claims were not directed to “the abstract idea of wireless transmission of content” but instead “to garage door openers that wirelessly transmit status information” and to “a particular improvement over prior art which uses a particular manner of sending and experiencing data.” The district court awarded Chamberlain enhanced damages and attorneys’ fees. The Court of Appeals for the Federal Circuit, however, disagreed and found the patent is invalid and unenforceable because it goes to an abstract idea that fails the Alice/Mayo test.
Who knew that a wireless garage door opener was an abstract idea and not patentable? It seems like one of those tangible things I really want! Just like irons that turn themselves off, this “invention” could be used to prevent the need to turn around and check when you are five (or twenty five) miles down the road. Well, joking aside, no one is really saying a garage door opener is abstract, but they are saying that wireless transmission for a garage door opener is an abstract idea. Unfortunately, that was the only thing the Chamberlain inventor claimed as new.
As the Federal Circuit stated in Chamberlain citing Alice v. CLS Bank, “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” In Alice, the Supreme Court recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under [35 U.S.C.] §101. To determine whether claims are patent eligible the Supreme Court set forth a two-part test in Mayo v. Prometheus as further explained in Alice. This test consists of the following steps:
Step 1: The court determines whether the claims are directed to an abstract idea.
Step 2: If the claims are directed to an abstract idea, then the court determines whether the claims include elements showing an inventive concept that transforms the idea into a patent-eligible invention. Step 2 is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”
In Chamberlain, the Federal Circuit applied Step 1 and found that “claim 1 is directed to wirelessly communicating status information about a system.” The Court pointed out that the specification of the ‘275 Patent supports this finding and stated:
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.
“[T]he broad concept of communicating information wirelessly, without more, is an abstract idea.” Here, the inventor merely limited wireless communication to use in movable barriers, or garage door openers. The Supreme Court and Federal Circuit “have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” The claims here do not relate to a new, specific implementation or a technological improvement.
Chamberlain’s reliance “on the asserted claims being directed to ‘physical real world manifestation[s] of an improved machines’” was misplaced. “Without more, the mere physical nature of [Chamberlain]’s claim elements (e.g., controller, interface, and wireless data transmitter) is not enough to save the claims from abstractness, where the claimed advance is directed to the wireless communication of status information using off-the-shelf technology for its intended purpose.”
Having found the invention goes to an abstract idea, the Federal Circuit applied Step 2 of the Mayo/Alice test stating “[t]he ‘inventive concept’ step requires us to look with more specificity at what the claim elements add, in order to determine whether they identify an ‘inventive concept’ in the application of the ineligible subject matter to which the claim is directed.” Merely adding conventional, known, high-level steps is not sufficient to provide an inventive concept.
Chamberlain argued “that the ordered combination of the asserted claims’ elements provides the inventive concept because ‘there is no evidence in the record’ that ‘a new type of movable barrier operator 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, however, found Chamberlain’s argument misplaced and provided clarification on the way the Federal Circuit intends Step 2 of the Mayo/Alice test to be applied, stating:
The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (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,” (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,” …
“In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the ‘inventive concept’?” The Court found there were none. In support of its opinion, the Federal Circuit noted “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 [Chamberlain] points to as allegedly inventive over the prior art.” But “[w]ireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.” Therefore, “no inventive concept exists in the asserted claims sufficient to transform the abstract idea of communicating status information about a system into a patent-eligible application of that idea.”
In sum, care must be taken when drafting not only the patent claims but also the specification to capture and explain the “inventive concepts.” Of course, even careful drafting will not save an application where such concepts are absent.
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