Heads Up: The Federal Circuit Sees Patent Eligibility in Knowing Which Way to Look
The most significant Federal Circuit decision in March was Thales Visionix, Inc. v. United States, another case finding eligible subject matter. What distinguishes this case—and demonstrates the inherently subjective I-know-it-when-I-see-it nature of the Alice test—is the extraordinary breadth of the claims. Consider claim 22, a single-step method claim:
A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.
The court held that this claim was patent eligible, because it was not directed to an abstract idea in Step 1 of the Alice test:
We hold that the ’159 patent claims at issue in this appeal are not directed to an abstract idea. The claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform.
This statement and the focus on the particularity of the claim is at odds with actual claim language and with the way the Alice test is normally applied. The claim says nothing “particular” about the configuration other than one sensor is mounted on the object and one on the moving reference frame. That’s it. No limitation of how mounted, how far or near each other, or they are oriented with respect to each other, or other physical parameters. You could have one sensor mounted on an “object” (e.g. a sensor worn on the wrist of a passenger) in the front compartment of a mile-long train (“moving reference frame”), and the other sensor mounted in the caboose. Indeed, there’s nothing in the claim that even requires the object to be in or on the moving reference frame. So one sensor could be mounted at the train station while the train with the passenger goes by. And talk about abstraction: “moving reference frame.” That’s anything that moves. The court seems to be relying on something more about the arrangement of the sensors than is in the claims themselves, given how they quote Diehr: “This arrangement is analogous to the claims in Diehr, which required the temperature measurement “at a location closely adjacent to the mold cavity in the press during molding.” But Diehr has specific claimed spatial relations--"closely adjacent"-- Thales has none. This suggests that the court was implicitly performing claim construction—which generally should happen before patent eligibility, but which the court has repeatedly kicked to the curb as a predicate of the Alice test. Nor is there any limitation on how orientation is determined, other than “based on signals.” There is no limitation on the kinds of signals, or how the determination is done. In other words, this simply claims the result of getting an orientation when you have two sensors, one mounted on some object and one mounted on a moving reference frame. This “claiming the result” and the absence of “how” are precisely the features that the court has used in other cases to find ineligible subject matter—even with claims vastly more specific. Consider Vehicle Intelligence:
None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results…
With a bit of obvious word substitution, this language applies directly to Thales’ claim. Or consider Electric Power Group, which had an extremely detailed claim. Brushing such details aside, the court stated:
The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101. … The focus of the asserted claims, as illustrated by claim 12 quoted above, is on collecting information, analyzing it, and displaying certain results of the collection and analysis. … The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea. … Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information…
The Electric Power court takes pains to point out that simply determining the results of information gathering (i.e. obtaining signals) is patent ineligible. That’s a direct read on “determining an orientation of an object relative to a moving reference frame based on signals.” How is it that “off-the-shelf” hardware failed to save the claim in Electric Power Group, but was apparently irrelevant in Thales, where the inertial sensors were off-the-shelf as well?
The answer is that the Thales court said that the method claim was not abstract because of the “unconventional configuration of sensors.” Wait: the unconventional arrangement analysis is considered in Step 2, not Step 1. That’s what the court held in BASCOM:
As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.
And it’s not clear that this even applies to Thales’ method claim, which recites the single step of “determining.” The arrangement of the sensors is only inferentially claimed, as part of the environment itself. In BASCOM the method claim included limitations that actively, not inferentially, performed the filtering operations at the unconventional locations. Putting this all together, the court just as easily could have issued this ruling, and found the claim 22 ineligible:
First, we consider whether the claim is directed to an abstract idea. Claim 22 recites a single step of “determining the orientation of an object relative to a moving reference frame.” Humans have been determining the orientation of objects relative to moving reference frames for time immemorial. When we watch the faces of passengers go by in a moving train, we determine their orientation (which way they are looking). When the cowhand on horseback watches how her cattle look at her sheepdog, she determines their orientation as well. Indeed, one could say that the human brain is so well adapted to determining the orientation of objects, that we do not even notice that we do it all the time. See, Peer et al, “Brain system for mental orientation in space, time, and person,” Proceedings of the National Academy of Sciences of the United States of America, vol. 112, no. 35 (Sept. 2015) (“Orientation is a fundamental mental function that processes the relations between the behaving self to space (places), time (events), and person (people).”). Thus, determining the orientation of an object relative to a moving reference frame is an abstract idea itself, and a mental step long practiced by humans. As there is only this single step in claim 22, the claim is unmistakably “directed to” this abstract idea. We turn then to Step 2. The Supreme Court has held that merely limiting an abstract idea to a particular technological environment does not transform an otherwise ineligible concept into an eligible one. Claim 22 only inferentially claims the use of the inertial sensors, at best limiting the single step of the claim to a rather generic, technological environment as opposed to a human one. That alone cannot contribute an inventive concept. Thales argues that the non-conventional arrangement of the inertial sensors provides the inventive concept. That is true, however, only when the arrangement itself contributes to the specifically claimed functional operation of the claim. In BASCOM, we held that arrangement was unconventional precisely because the functionality of the filtering was performed at the unconventional location (“The inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.”) Here, nothing happens at the location of sensors themselves: they operate exactly the same way and provide the same types of signals that they would in any conventional arrangement. Thus, the unconventional arrangement here does not contribute an inventive functionality. Finally, we note that claim 22 fails to specify any inventive concept in “how” the determination is made, other than to say “based on signals.” In McRO we explained that in Step 2, "a patent may issue for the means or method of producing a certain result or effect, and not for the result or effect produced. We therefore look to whether the claims in these patents focus on a specific means or method that improves relevant technology." (emphasis added). But merely making the determining "based on" the signals does not provide a "specific means or "method" as required. We do not read claim 22 as limited to the specific equations or mathematical framework in the specification. Even if we did, these equations appear to be nothing more than laws of nature, and thus cannot contribute to the inventive concept. See, Mayo, Flook. The absence of limitations to particular ways of making this determination or even particular types of signals clearly demonstrates the lack of an inventive concept beyond the merely abstract idea itself. In other words, given inertial sensors (which themselves are conventional), how else would one determine an orientation except “based on signals”? See, Vehicle Intelligence (“But neither the claims at issue nor the specification provide any details as to how this “expert system” works or how it produces faster, more accurate and reliable results.”). In McRO we held that "The abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where it matters not by what process or machinery the result is accomplished." Here, we find that the claim 22 covers the result of determining the orientation of an object relative to a moving reference frame where it matters not by what process or machinery that result is accomplished. This analysis further shows that Thales’ claim risks preempting the abstract idea itself, since there is no other way to make this determination of orientation. In this regard, we find the Supreme Court's decision in O'Reilly v. Morse remarkably on point in their framing of the preemption problem. The Court found that Morse's "claim is too broad, and not warranted by law" because:
It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current [the signals are from inertial sensors mounted on an object and a moving reference frame], and the result is the marking or printing intelligible characters, signs, or letters at a distance [determining the orientation of the object based on the signals].
If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance [determining an orientation of an object] by means of the electric or galvanic current [inertial sensors], without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee.
Like the Morse Court, we find claim 22 not warranted in law.
Now, do I believe this is the correct analysis? To be clear I do not (so don’t get any funny ideas about quote mining me). I only elaborate it to demonstrate that while patent eligibility may no longer depend on the “clever draftsman,” it can certainly depend on the clever jurist. I think that the court here saw what it wanted to see: a helmet-mounted display used by jet fighter pilots:
rather than actual scope of the claim (almost too simple to draw):
The context of Thales’ invention was sufficiently “technological” and distinctive from the court’s everyday experience with computers and software that collect and display information that it colored the court’s perception of the claims and the Alice analysis.
*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.