Patent claims drawn to determining if articles are in a specified geographic area, and then taking an action based on the determination, are not eligible under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int'l. CalAmp Wireless Networks Corporation v. ORBCOMM, Inc., No. 3:16cv906-HEH (E.D. Va. Feb 9, 2017.) Accordingly, the court in this case granted a partial motion to dismiss under Rule 12(b)(6), holding claims of U.S. Patent No. 6,850,839 patent-ineligible under Section 101.
The ’839 patent, including its asserted claims, is directed to “tracking an object by determining whether the object is presently located within a prescribed geographic area and taking appropriate action depending on whether the object is or is not within that area.” Here is claim 1:
A method for determining whether an article tracking device is within a spatial zone, the method comprising the steps of:
obtaining a current time and a current position of the device;
determining a spatial zone that corresponds to the current time;
determining whether the current position of the device is within the spatial zone; and
sending a request to a server for a subset of server database records in response to the determination of whether the current position of the device is within the spatial zone.
Applying the first prong of the Alice/Mayo test, the court easily found that the ’839 patent claims were directed to an abstract idea. The claims simply required collecting information about an object’s position, its required position, and then responding to the collected information. Thus, the ’839 patent simply automated a process that had been known to humans “forever.”
The ’839 patent failed the “second stage of the Alice framework,” because it simply used generic computing technology to implement the claimed method. Just because prior tracking systems did not use a remote database did not mean there was an inventive concept in these claims. Others had used the recited database structure “for precisely the same reasons cited by” patent owner.
Lessons for Practice
This case exemplifies the reality that it is somewhat of a fiction to say that the Alice/Mayo patent-eligibility test is a two-part test. In (unsystematically) perusing recent patent-eligibility cases, I have found one in which a court found that claims were directed to an unpatentable abstract idea, but then saved under the second part of the Alice/Mayo test by significant additional innovation. There may be others. But a somewhat random sampling of a number of recent Section 101 cases – both finding patent claims eligible and ineligible under Alice – reveals that the game is generally over once the abstract idea issue is decided.
Courts routinely conflate the question of whether patent claims are directed to an ineligible abstract idea with the question of whether the claims recite a patent-eligible innovation. A lesson, then, is to focus claim language and arguments on demonstrating subject matter that can be shown not to be abstract.