After the Federal Circuit’s August 1, 2016, decision in Electric Power Group, LLC v. Alstom S.A., a defendant sought reconsideration of a Rule 12 motion to dismiss based on alleged patent-ineligibility of claims directed to “machine-to-machine communication platforms designed for tracking and monitoring the location and status of widely dispersed fleet vehicles and related mobile assets.” However, even following Electric Power Group, the district court declined to find claims of four of five patents ineligible under 35 U.S.C. 101. Orbcomm, Inc. v. Calamp Corp., No.: 3:16CV208-HEH (E.D. Va. Oct. 19. 2016).
The court identified the patents-in-suit as follows:
- U.S. Patent No. 6,292,724 (“the ‘724 Patent”) (entitled “Method Of And System And Apparatus For Remotely Monitoring The Location, Status, Utilization And Condition Of Widely Geographically [Dispersed] Fleets of Vehicular Construction Equipment And The Like And Providing And Displaying Such Information”);
- U.S. Patent No. 6,611,686 (“the ‘686 Patent”) (entitled “Tracking Control And Logistics System And Method”);
- U.S. Patent No. 6,651,001 (“the ‘001 Patent”) (entitled “Method Of And System And Apparatus For Integrating Maintenance Vehicle And Service Personnel Tracking Information With The Remote Monitoring Of The Location, Status, Utilization And Condition Of Widely Geographically Dispersed Fleets Of Vehicular Construction Equipment And The Like To Be Maintained, And Providing And Displaying Together Both Construction And Maintenance Vehicle Information”);
- U.S. Patent No. 6,735,150 (“the ‘150 Patent”) (entitled “Method Of And Apparatus For Distinguishing Engine Idling And Working Hours”); and
- U.S. Patent No. 8,855,626 (“the ‘626 Patent”) (entitled “Wireless Control For Creation Of, And Command Response To, Standard Freight Shipment Messages”).
A week after the court found that all five-patents claimed eligible subject matter under 35 U.S.C. § 101 and Alice Corp v. CLS Bank, the Federal Circuit decided Electric Power Group. There, the Federal Circuit found that patent claims directed to “real-time performance monitoring of an electric power grid” were not patent-eligible.
The court’s present opinion turned first to claim 1 of the ’626 patent (available here). Finding that the ’626 patent “claims describe a process of gathering information and translating it between two or more incompatible formats,” the court found that “they are directed to the wholly abstract idea of translation.” Turning to the second prong of the Alice test, there was no inventive concept because “the scope of the ‘626 Patent is limited to freight assets.” The claims recited only generic technical components.
The court then addressed the ’724, ’686, and ’001 patents together because “[a]ll three patents pertain to the remote monitoring of fleet vehicles.” The court found that these patents’ recitation of using GPS signals may be enough to render them non-abstract, and in any case, at the pleadings stage, suggested an inventive concept: “[w]hen considering only the four corners of the Complaint and attached patents, the Court cannot find that the GPS and satellite communications claimed in these patents constitute mere conventional, generic technology.”
Finally, the ’150 patent, which claimed “a method of measuring engine run time by monitoring engine frequency,” also survived reconsideration of the patent-eligibility question. The court explained that “even assuming that measuring engine run time is an abstract idea, the ‘150 Patent is saved at Alice step two.” The court explained that
The Complaint and attached patent clearly indicate that using engine frequency to measure run time is innovative technology. While an alternator is certainly a known, conventional machine, monitoring alternator frequency to measure engine run time is a non-conventional and non-generic use for that machine.
While at least some of the claims that survived this Rule 12 motion appear to this commentator to be claims that would not survive in other district courts, or if considered by at least some Federal Circuit panels, this case nonetheless demonstrates that software patent claims can continue to have vitality, even after Alice, when couched in technical environments.