Patent claims directed to counting steps in an exercise session, including accounting for an incline of a surface on which a user is stepping, have survived a Rule 12(b)(6) motion to dismiss. Uniloc USA Inc. v. Samsung Electronics America, Inc., Civil Action No. 2:17-CV-00651-JRG (E.D. Texas Sept. 18, 2018). Applying the familiar Alice/Mayo abstract idea test, Judge Gilstrap, “drawing all reasonable inferences in favor of” the patent owner, found that claim 1 of US Patent No. 7,690,556is “directed towards the unconventional use of accelerometers in a step counter in order to measure the incline traveled by the user,” and that “such use is not directed to an abstract concept under AliceStep One.”
Claim 1 of the ’556 patent recites:
A step counter system comprising:
an accelerometer to detect motion of a user;
a step calculation logic to utilize the motion detected by the accelerometer to detect and count steps; and
an incline logic to utilize the motion detected by the accelerometer to make a calculation of an incline of a surface on which the user moved for one or more of the steps, wherein the calculation is performed for a step based on identifying a vertical travel up portion of the step, identifying a vertical travel down portion of the step, and computing a difference between the vertical travel up portion and the vertical travel down portion of the step.
The defendant argued that claim 1 was directed to the abstract idea of counting steps to create “a more accurate counting of calories expended by measuring the vertical incline of the traversed path.” The crux of the defendant’s argument was that the claim could be broken down into elements that each could be practiced by a human such as a personal trainer, i.e.,“counting the number of steps taken, determining the incline climbed/descended, in measuring calories expended.” The defendant cited Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l. Ass’n., 776 F.3d 1343 (Fed. Cir. 2014), for the proposition that claim 1 “is no different from collecting and recognizing data which the Federal Circuit has held is an abstract idea.”
The court here found the claims of the ’556 patent more like claims held to be patent-eligible in Thales Visionix, Inc. v. United States,850 F.3d 1343 (Fed. Cir. 2017). The court reproduced in full claim 1 from US Patent No. 6,474,159, at issue in Thales,and the claim is worth reproducing here:
A system for tracking the motion of an object relative to a moving reference frame, comprising:
a first inertial sensor mounted on the tracked object;
a second inertial sensor mounted on the moving reference frame; and
an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.
In Thales,the Federal Circuit found claims patent-eligible because, even though they implemented a mathematical formula, they did so in the context of a structure or process that was patent-eligible when the claims were considered as a whole. Here, the court acknowledged that the claims addressed deficiencies in calorie calculation logic of prior systems “that undoubtedly involve mathematics.” However, “the logic steps are part of the greater whole” that uses hardware including accelerometers to provide “underlying mathematical improvements to create an improved step counter device.” Thus, said the court, the claimed subject matter not only counts steps but dynamically uses accelerometer data to more accurately represent calories expended by determining an incline. A personal trainer could not provide the results of claim 1 by measuring calories based on a precise measurement of incline.
Lessons for Practice
The first lesson for patent prosecutors is to remember the Thalescase, and to remember the support it gives for patent-eligibility of claims that perform mathematical processing in combination with explicitly-recited hardware. The second lesson is that, when drafting claims these days, it is a good idea wherever possible to recite hardware not just in a claim preamble, but in the body of the claim.
Beyond these lessons, note one significant difference between the claims in Thalesand claim 1 of the ’556 patent. The claims in Thales(including a very short method claim not discussed in the present decision) recited an arrangement of two inertial sensors. The Federal Circuit’s decision in Thalesdepended on the “particular arrangement” of those sensors. Claim 1 of the ’556 patent, in contrast, simply recites an accelerometer that provides data that is then analyzed. Arguably, claim 1 here does not recite such an arrangement of hardware. I confess that I did not dig into the briefing, and I do not know whether this difference was discussed. But it certainly seems to be a distinction that could have led a different court to resolve this motion differently.