Patent claims directed to processing geo-coordinates are patent-ineligible, says a court in granting a Rule 12(b)(6) motion to dismiss. Burnett v. Panasonic Corp. of North America, Civil Action No. PX 17-00236 (D. Md. Nov. 1, 2017).
The plaintiff owned two patents related to “geospatial technologies,” and had asserted claims of one of them, U.S. Patent No. 7,107,286. Asserted claim 1 of the ’286 patent recites
1. A geospatial media recorder, comprising:
converting means for converting longitude and latitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and
combining means for concatenating the individual discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above earth's surface allowing user to geospatially reference entities or objects based on the identified geospatial positional location and point identification.
Turning to the first prong of the two part Mayo/Alice patent-eligibility test, the court agreed with the defendant “that Plaintiff has patented a basic and widely applicable mathematical methodology to convert geospatial coordinates into natural numbers.” This was a case where preemption (or the breadth of the claims) was a concern because the claims “would cover any process for converting geographic coordinates into alphanumeric representations,” and were not dependent on anything other than a generic device. In short, you can’t patent a mathematical formula, which is what the claim did here.
Step two of the Mayo/Alice test did not save the patent claims. A computer was “merely a tool” for performing the recited mathematical conversion, and therefore “add[ed] no independent inventive concept to render the claims patent-eligible.” The court then rejected the plaintiff’s argument that the claims were eligible under the machine-or-transformation test because they somehow changed the computer’s “state” by entering converted data into the computer memory. But not only was the machine-or-transformation test simply a “useful clue,” but the test was not met here. The plaintiff sought to patent a mathematical formula, and not any machine or manufacturing process.
Further, a limitation to a field of use, i.e., to the “particular technological area” of “video production,” could “not, without more, transform [the claimed abstract idea] into a patentable “inventive concept.”
Lessons for Practice
The priority application for the patent in this case was filed in 1999, making this patent is one of those filed shortly after State Street Bank & Trust Co. v. Signature Financial Group, 149 F. 3d 1368 (Fed. Cir. 1998). After State Street Bank, many thought the wild west was wide open for patenting mathematical formulae. Turns out that was wrong, but the patent drafters here nonetheless could rightly have thought that the law sanctioned patentability of a mathematical formula. From that fact, perhaps we can draw two lessons.
First, the universe of issued U.S. patents includes many filed before the 2010 Bilski decision, and even more filed before Mayo (2012) and Alice (2014) whose drafters could not and/or did not consider the place to which patent-eligibility law as now evolved. We will be seeing cases like this for some time.
Second, the recited subject matter may have been intended for a specific application, or field of use, but that was nowhere recited in the independent claims. I don’t know whether this subject matter could have been saved – but today’s drafter would be well-served to focus on improvements to a specific technical environment, and not on an abstract formula that could be applied in that technical environment.