Patent claims directed to automating collection and interpretation of sensor data are often suspect under the two-part Mayo/Alice patent-eligibility test under 35 U.S.C. § 101. Not so often, however, do judges do as the court did in iLife Technologies, Inc. v. Nintendo of America, Inc., C.A. No. No. 3:13-cv-4987-M (Jan 17, 2020), and hold patent claims invalid under § 101 after a trial and eight figure jury verdict in favor of the plaintiff. The accused device, interestingly, was one with which many of us are familiar: the Nintendo Wii.
Claim 1 of U.S. Patent No. 6,864,796 recites:
A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising:
a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and
a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance
wherein said processor generates tolerance indicia in response to said determination; and
wherein said communication device transmits said tolerance indicia.
A jury found that claims of the ’796 patent were not invalid under 35 U.S.C. § 112 for lack of adequate written description or enablement, and awarded the plaintiff $10,100,000 in damages. The defendant then brought posttrial motions of patent-ineligibility under § 101, indefiniteness under § 112(b), and lack of written description and enablement under § 112(a). The court granted the motion under § 101, and did not reach the § 112 questions.
Under step 1 of the Alice test, the court determined that “[c]laim 1 recites a system comprising conventional computer components performing various operations,” and is “directed to the abstract idea of ‘gathering, processing, and transmitting . . . information.’” The fact that the claims recited a specific type of data – acceleration data – did not render the claim non-abstract. Rather, the data analysis and newly generated information were abstract and ineligible mental processes, said the court, citing Elec. Power Grp., LLC v. Alstom S.A. (Fed. Cir. 2016), and Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. (Fed. Cir. 2014).
The claim was not less abstract for reciting a computer, because it only recited conventional computer components, said the court, citing Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC (Fed. Cir. 2016), among other cases. Unlike Thales Visionix Inc. v. United States (Fed. Cir. 2017), and Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), claim 1, although reciting an arrangement of sensors and processors, “is not directed to an improvement in the functionality of sensors and processors.”
Under Alice step 2, the court determined that the claim did not recite an inventive concept. It simply performed ordinary steps for gathering and analyzing data. Notably, the court criticized the ’796 patent for requiring neither a new type of, nor a new method of measuring, information, but instead providing “for an unspecified set of rules for analyzing sensor data, but . . . no further details on those rules.” This case was thus more like Secured Mail Solutions LLC, v. Universal Wilde, Inc. (Fed. Cir. 2017) (encryption of email communications not patent-eligible) than McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) (detailed rules for synchronizing digital animations and sound held patent-eligible).
So the court ruled in the defendant’s favor, but with a high-stakes twist. Noting the need to “conditionally rule on Defendant’s Motion for a New Trial” under FRCP 50(c)(1), the court denied that motion. If the case goes up to the Federal Circuit, and the grant of judgment in the defendant’s favor is reversed, then the court would not be able to “say that the verdict was against the weight of the evidence.”
Lessons for Practice
This case is another example of how technical details – in claims – can be important for patent-eligibility. Consider the Federal Circuit’s recent split, and controversial, decision in American Axle & Mfrg., Inc. v. Neapco Holdings LLC. Somewhat similar to the court’s finding here that the ’796 patent did not provide details concerning how to analyze acceleration data, the Federal Circuit majority in American Axle criticized the patent there, which it agreed was invalid under § 101, for simply applying a natural law with examples, but not further limitations.