A court held that patent claims directed toward “data collection and mathematical computations are quintessential abstract ideas,” and “[t]he generic equipment underlying the claims does not provide an inventive concept,” granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. TPP Tech LLC, v. Zebra Technologies Corporation, No. 19-CV-00500-RGA (D. Del. Aug. 15, 2019).
U.S. Patent Nos. 7,295,224 and 7,825,943 are directed to “‘compensating for the effects of thermal history on thermal print heads.’” The court noted for both patents “that the method and apparatus claims are indistinguishable for the purpose of the Section 101 analysis.” Independent claim 1 of the ‘224 Patent is reproduced here:
1. A computer-implemented method comprising steps of:
identifying a first print head temperature Ts of a print head in a printer;
identifying a current ambient temperature Tr in the printer;
identifying a modified print head temperature Ts’ based on the first print head temperature Ts and at least one property selected from the group consisting of the ambient printer temperature Tr and a current relative humidity; and
identifying an input energy to provide to a print head element in the print head based on the modified print head temperature Ts’.
Independent claim 1 of the ‘943 Patent is reproduced here:
1. In a thermal printer including a print head element, a computer
implemented method comprising a step of:
computing an input energy to provide to the print head element based on a current temperature of the print head element, a plurality of one-dimensional functions of a desired output density to be printed by the print head element, and at least one property selected from the group consisting of an ambient printer temperature and a current humidity.
The court applied the two-step Alice framework to Zebra Technologies’ Rule 12(b)(6) motion to dismiss. The court noted that “[m]athematical formulas, regardless of whether they are known in the prior art, are one category of patent ineligible abstract idea,” Parker v. Flook, 437 U.S. 584, 591 (1978), and “[c]omputer implemented methods directed at collecting, analyzing, and storing data are similarly patent ineligible,” Elec. Power Grp., LLC v. Alstom SA., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). As such, the court found the claims of the ‘224 Patent claims are directed to an abstract idea because the claims are directed to “only collecting information and inputting that information into a series of mathematical equations to compute a value.”
Regarding the ‘943 Patent, the court found that the claims are directed toward “the computation of an input energy using a number of measured environmental values.” Since “a mathematical calculation is central to the asserted claim[s],” the court found the claims of the ‘943 Patent are similarly directed toward the abstract idea of calculating an input energy.
The court went on to analyze step two of Alice. Regarding the ‘224 Patent, the court noted that the specification “describes the equipment and the general technological environment of a thermal printer as known in the art.” In citing Alice, the court further noted that “[l]imiting an abstract idea to a particular technological environment, without more, is not an inventive concept.” The court found that the claims of the ‘224 Patent “do not contain an inventive concept” because the claims “do nothing more than limit a series of measurements and mathematical calculations to the thermal printer environment.” Therefore, the court found the ‘224 Patent does not satisfy the Alice framework and is patent ineligible subject matter.
Regarding the ‘943 Patent, the court again noted that the “specification describes the print head element as conventional in the prior art.” The court found that the claims of the ‘943 Patent “do not contain an inventive concept” because “[c]onventional elements and generic computers do not impart a patent eligible inventive concept.” Therefore, the court found the ‘943 Patent similarly does not satisfy the Alice framework and is patent ineligible subject matter.
Lessons for Practice
While including structure in the claims and specification of software applications can be helpful in establishing patent eligible subject matter, this case illustrates, similar to Secure Cam v. Tend Insights, that the inclusion of generic structure is insufficient to establish patent eligibility. Instead, the claims and specification should be directed toward technological solutions to technological problems in order to establish patent eligibility under § 101.