Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. §101 and the Alice/Mayo test. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.)
The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the patent. The PTAB upheld validity of claims 1-47 and held claim 48 invalid. Following the IPR, MRSI moved for summary judgement on the basis of patent-ineligibility under 35 U.S.C. §101.
The ’327 patent discloses a method which utilizes “double pick and place” wherein a first workpiece is first moved to an intermediate location close to a target attach location on a second workpiece, and then, moved to the final attach location.
Claim 1 of the ‘327 patent, determined by the Court to be representative, recites:
A method for placement of a first workpiece onto a second workpiece comprising the steps of:
a) providing a first workpiece positioned at an origination location different from a target intermediate location;
b) providing a second workpiece positioned at a work location and having a target attach location different from said target intermediate location and said origination location;
c) performing a first place step to displace said first workpiece from said origination location to an actual intermediate location, wherein said actual intermediate location is different from said origination location and is identical to said target intermediate location or differs from said target intermediate location by an intermediate error deviation; and
d) performing a second place step to displace said first workpiece from said actual intermediate location to an actual attach location on said second origination location and said target intermediate location and is identical to said target attach location or differs from said target attach location by an error deviation.
Under Alice step one, the Court held that the claims of the ‘327 patent were directed to the abstract idea of placing an item at a final location more accurately by first moving it to an intermediate location. Per the court, examples of this in daily life abound: in golf you first hit the ball to the green and then putt it into the hole; when you put a nut on a bolt, you first move it close to the bolt, and then line it up; etc.
Plaintiff Palomar argued that the claimed invention improved a process for accomplishing a known technical problem, similar to claims found to be patent eligible in McRO, Inc. v. Bandai Namco Games AM. Inc., 837 F.3d 1299 (Fed. Cir. 2 and Diamond v. Diehr, 450 U.S. 175 (1981). For example, in McRO, the court found claims relating to a “specific asserted improvement in computer animation” and were not directed towards a patent-ineligible abstract idea. (McRO at 1314).
The court found the claims of the ‘327 patent accomplish a much broader goal in a much less specific way than the disclosures of Diehr and McRO, and that Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709 (Fed. Cir. 214) is more analogous. In Ultramercial, an 11-step process was directed to the abstract idea of “displaying an advertisement in exchange for access to copyrighted media.” Ultramercial at 714. A process or method patent may nonetheless be directed toward an abstract idea if “the majority of the limitations” are “devoid of a concrete tangible application.” Id. at 715.
Under step two of Alice, there was no saving inventive concept. Incorporating conventional tools is not enough to transform an abstract idea a patent-eligible inventive concept under Alice. Further, claims limiting the process to a particular technical environment (die placement and/or chip manufacture) are not sufficient to supply the necessary inventive concept. Bilski v. Kappos, 561 U.S. 593, 609 (2010).
Lessons for Practice
Operating in a technical environment is not sufficient to transform an abstract idea to an inventive concept. For patent eligibility, you need technical detail, probably in the form of an algorithm or custom hardware.