Claims directed to a virtual smartphone that could be displayed on a vehicle touchscreen are patent-ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, held the court in KCG Technologies, LLC v. CarMax Auto Superstores, Inc. The court thus granted the defendants’ Rule 12(b)(6) motion to dismiss.
Claim 1 of U.S. Patent No. 9,671,955 recites:
A virtual smart phone, comprising:
a screen mounted in an automobile;
a processor, a non-transitory memory, and a power port mounted in the automobile;
a software application executing on the processor to control image display on the screen and emulate features of a handheld device;
a visual representation of a plurality of features of the handheld device on the screen; and
an interactive element, wherein the interactive element allows access to the plurality of features of the handheld device,
wherein the plurality of features of the handheld device comprises volume control, messages, phone call, email, internet browser, music player, calendar, Global Positioning System, contacts, and maps.
Claim 3, the other independent claim of the ’955 patent, is a method claim of similar scope.
The court did not find these claims challenging to analyze; the first sentence of the court’s discussion summarized its finding under part one of the Alice test that “[t]he ’955 patent is drawn to the abstract idea of emulating the features of a smartphone or other handheld device on another screen.” The claims recited only the functionality of emulating a smartphone without, the court stated, describing or claiming “the means by which its desired function is to be achieved or implemented.” At best, claim 1 recites generic computer components used generically.
The plaintiff argued that the claims solved the purported “fundamental problem” of “technology—the inability to safely access features on the smart phone in an automobile.” But the claims did not describe how this problem was solved. Enfish, LLC v. Microsoft Corp., (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016), on which the plaintiff tried to rely, were easily distinguishable because “[t]he claims of the ’955 patent are not directed to any technological improvements or solutions.”
As you might imagine, the court then disposed pretty quickly of the question of whether, under part two of the Alice test, the ’955 patent claims recited an inventive concept transforming the abstract idea into patent -eligible subject matter. None of the recited technical components were used or combined unconventionally or so as to improve technology.
Lessons for Practice
Claiming functionality has perils under 35 U.S.C. § 112, but also, as we have previously discussed, functional claiming presents perils to § 101 patentability. Here, the claims of the ’955 patent made little pretense at anything else. For example, dependent claims were directed to functional aspects such as a screen being a touchscreen, and emulating various features, e.g., an interactive device being a trackball or mouse, etc. The claims simply recited what these features were, and did not, and the court emphasized, say anything about how these features were achieved.
As we like to say, as much as possible, claims should recite the “how,” and not just the “what.”