Federal court clarifies Test For Patentable Subject Matter_Abstract ideas
The Federal Circuit on Aug 1, 2016, upheld a district court’s summary judgment against Electric in Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016).
This case involves the eligibility for patenting, under 35 U.S.C. § 101, of certain claims of three of Electric Power Group, LLC’s patents, U.S. Patent Nos. 7233843, 8060259, and 8401710. Electric’s claims were for methods and systems for real-time electric power grid monitoring across multiple sources by collecting and analyzing data and displaying results. The district court found that Electric’s claims were directed to patent-ineligible subject matter under Patent Act section 101.
The federal court affirmed the district court holding of invalidity of claims of the above U.S. Patents
Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101.
The court applied the two-part analysis from Alice Corp. (also called the Mayo test) in determining the eligibility of subject matter under section 101.
Under step one of the two-step Alice/mayo test (click here to see the mayo test), the claims were no more than the abstract idea of “gathering and analyzing information of a specified content, then displaying the results without any particular assertedly inventive technology for performing those functions.”
Under the second Alice step, there was insufficient inventive concept to transform the claimed subject matter into a patent-eligible application of the abstract idea. “Merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes whose implicit exclusion from section 101 undergirds the information-based category of abstract ideas.”
The federal court agreed that Electric Power Group’s asserted claims, rather than claiming “some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,” some “particular implementation,” they “purport to monopolize every potential solution to the problem”—any way of effectively monitoring multiple sources on a power grid. Whereas patenting a particular solution “would incentivize further innovation in the form of alternative methods for achieving the same result,”
Further the federal court agreed that, allowing claims like Electric Power Group’s claims would “inhibit innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea”
Takeaway from this case is that claims directed to monitoring and analyzing data may be valid when a claim limitation with a specific way of using computer to monitor/analyze data and its particular implements are included.
Click here for the full opinion.
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