In today’s post-Alice landscape, patent practitioners have developed a gut-feeling about patent eligibility that helps them in various aspects of daily life: advising clients regarding asserted patents, developing office action responses, probing questions in invention disclosure meetings, and drafting effective patent applications, to name a few. If an inventor came to me and said their invention related to a charging system for electric vehicles, I’d probably have a gut feeling that the technology is patent eligible. A recent case is a good reminder that patent eligibility can turn on the level of abstraction of the claims and the amount of technical disclosure in the specification.
In a decision issued March 28, 2019, ChargePoint, Inc. v. SemaConnect, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) found invalid the asserted claims of four patents relating to electric vehicle charging. Each claim was found to be directed to unpatentable subject matter and, accordingly, invalid under 35 U.S.C. § 101. There are a few practice pointers to glean from the decision. That said, my personal opinion is that this case, like many, would have been properly disposed of under 35 U.S.C. § 102 or 35 U.S.C. § 103.
Each of the four asserted patents shared a common specification and were directed to networking aspects of electronic vehicle chargers. The CAFC addressed different types of claims (apparatus, system, method, etc) in turn because the parties did not identify a representative claim, as is sometimes typical in § 101 decisions. The CAFC first addressed claims 1 and 2 of US 8,138,715, reproduced below.
An apparatus, comprising:
- a control device to turn electric supply on and off to enable and disable charge transfer for electric vehicles;
- a transceiver to communicate requests for charge transfer with a remote server and receive communications from the remote server via a data control unit that is connected to the remote server through a wide area network; and
- a controller, coupled with the control device and the transceiver, to cause the control device to turn the electric supply on based on communication from the remote server.
Step 1 of the Alice analysis asks if the claim is directed to ineligible subject matter. As part of that analysis, the CAFC began by examining the specification of the ‘715 patent to understand “the problem facing the inventor.” According to the ‘715 patent specification, there were no communication networks that would enable “drivers, businesses, and utility companies to interact efficiently with the charging stations.” The CAFC noted that “the specification never suggests that the charging station itself is improved from a technical perspective, or that it would operate differently than it otherwise could. Nor does the specification suggest that the invention involved overcoming some sort of technical difficulty.”
Unfortunately for the patentee, the CAFC was unimpressed that they were the first to identify that networking vehicle chargers could be advantageous: “the inventors here had the good idea to add networking capabilities to existing charging stations to facilitate various business interactions. But that is where they stopped, and that is all they patented.” Then the CAFC declared that “claim 1 would preempt the use of any networked charging stations.”
The CAFC also found, under Step 2 of the Alice analysis (the search for an inventive concept), that there was not something more that would make the claims patent-eligible. Rather, the CAFC found that “the alleged ‘inventive concept’ that solves problems identified in the field is that the charging stations are network-controlled. But network control is the abstract idea itself.”
Patent by patent, each claim fell as invalid under § 101. The other patents included claims directed to modifying electricity flow based on demand response communications from the server, to methods relating to using the network-controlled charging stations, and systems including network-controlled charging stations.
So, beyond the issues raised above, what practical lessons can be gleaned from the opinion? For one, the opinion is a good reminder for patent application drafters, particularly in the electrical and software space, to include as much of the “how” as possible, not just the “what”. For instance, the CAFC noted, “the patent never discusses any technical details regarding how to modify electricity flow.” Even if the broadest claims are directed to the “what” of the invention (which seems questionable, in light of this decision), having some dependent claims describing how the invention is implemented, and including those details in the specification, seems advisable.
Second, to the extent possible, convey the technical improvements in the specification. Here, the specification’s description of the problem and solution seems to have set the tone for the CAFC, based on the following excerpt:
Notably, however, the specification never suggests that the charging station itself is improved from a technical perspective, or that it would operate differently than it otherwise could. Nor does the specification suggest that the invention involved overcoming some sort of technical difficulty in adding networking capability to the charging stations
Possibly, if ChargePoint included more disclosure about how the inventors improved existing technology, rather than simply leveraging the technology, this case could have had a different result.
Turning to the propriety of the analysis, the CAFC expressed concern that the claims would preempt the use of networked charging stations. However, for the sake of argument, if ChargePoint truly was the pioneer in developing networked charging stations, isn’t that the point of a patent? Namely, to reward an inventive entity with a limited-term, exclusive right? In my opinion, Alice and 35 U.S.C. § 101 are not the sword to use to attack overly broad claims. If the claims are too broad, then they should be invalidated by prior art, or perhaps for lack of written description or enablement. Here, the CAFC may have reached the correct result – that the claims are invalid – but I question the route to get there.
I also take issue with the CAFC’s use of the Morse cases to support the conclusion that ChargePoint’s claims are invalid. In Morse, claims directed to Samuel Morse’s discovery of electromagnetism itself were invalidated. That’s because electromagnetism is a law of nature. However, Morse’s claims directed to an application of electromagnetism were allowed to stand. In this case, networked electric vehicle chargers are not a law of nature. Thus, unlike in Morse, ChargePoint’s claims directed to networked electric vehicle chargers are not claiming a law of nature. So, the claims are not directly correlated to the claims that were invalidated in Morse.