Chamberlain v. Techtronic: Obviousness in §101 (Alice) Clothing

 

35 U.S.C. § 101 states, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

Recently, the interpretation of this statute has been a highly debated subject. (See, e.g., Congress’ Section 101 Fix Would Create a 112(f) Problem, Legislative Changes to Eligibility, and also As Stakeholders Await New 101 Bill, Responses to Tillis Underscore Need for Movement). Despite the debates, a framework does exist for determining when an innovation encompasses patent eligible subject matter. The Patent Office summarizes this framework in a flowchart available in MPEP § 2106(III). Nevertheless, courts are not required to follow these guidelines. Thus, without a legislative reformatting of 35 U.S.C. § 101, these guidelines may be abused, ignored, or sidestepped. For example, courts might effectively invalidate patents under a simplified 'wolf in sheep's clothing' subject matter analysis, while sidestepping key portions of the framework or a full-scale obviousness analysis.

In Chamberlain Group, Inc., v. Techtronic Industries Co., No. 2018-2103 (Fed. Cir. Aug. 21, 2019), the Federal Circuit does just this, and makes an obviousness decision under the guise of the subject matter eligibility framework. The claimed invention in the case is for a moveable barrier, such as a garage door, fitted with a wireless transmitter for communicating an operational status and unique identifier to an operator. The premise of the § 101 portion of the decision is that the subject matter of the patent is ineligible for protection because "...communicating information wirelessly, without more, is an abstract idea." (Chamberlin Group, Inc., No. 2018-2103 at 6). I think Alexander Graham Bell and Samuel F.B. Morse are turning in their graves.

For example, while not exactly scholarly support, Wikipedia says that wireless communication is "...the transfer of information or power between two or more points that are not connected by an electrical conductor." If you add in the electrical conductor, what you get is a type of communication that is nearly identical to the patentable communication created and occurring in The Telephone Cases (Dolbear v. American Bell Telephone Company, 126 U.S. 1 (1888)) and in O'Reilly v. Morse, 56 U.S. 62 (1854). The Federal Circuit's determination that wireless communication is an abstract idea appears to be wholly unsupported, and the subject matter is likely more closely related to transmitting symbols or vocal sounds telegraphically.

To be fair, the decision that wireless communication is an abstract idea may be an attempt by the Federal Circuit to pay homage to In re Nuijten, 500 F.3d 1346, 1357 (2007), which held that a transitory, propogating signal is patent ineligible subject matter. However, it is significant to note that the subject matter claimed in In re Nuijten was directed to a "signal". Wireless communication, especially when integrated with the practical application of communicating an operational status of a garage door, encompasses more than merely a transitory signal. Furthermore, whether or not claim elements are tangible or intangible is supposed to be immaterial to subject matter eligibility determinations. (See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2358-59 (2014), and also, ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)). Hence, the subject matter of this case was not ineligible subject matter, however obvious it may have been.

The Federal Circuit more clearly indicates that this decision should have been decided under an obviousness analysis when it states, "The specification admits the act of transmitting data wirelessly is 'well understood in the art,' and no other changes to the generically claimed moveable barrier operator are recited in the asserted claims or described in the specification." (Chamberlin Group, Inc., No. 2018-2103 at 7). In other words, the Federal Circuit is saying that nothing new is presented in the specification, and therefore the subject matter is ineligible. The better conclusion for this line of reasoning is that the specification includes nothing new in the art, so the invention is obvious. The problem with the Federal Circuit's conclusion is that innovators wanting to further improve wireless communication will have a much more difficult time achieving that goal if the entire technical field is preempted as ineligible subject matter.

Not only does the Federal Circuit abuse the § 101 framework in order to sidestep an obviousness analysis, it ignores a key aspect of the second step of that framework. The second step of the "Alice two-step" is determining whether an inventive concept is present in the claims. (See, Step 2B and pathway (C) in the flowchart in MPEP § 2106(III)). In considering the alleged ordered combination in its Step 2B analysis, the Federal Circuit states that one of the proper inquiries is "whether all of the steps 'as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately.'" (Chamberlin Group, Inc., No. 2018-2103 at 9-10). The Federal Circuit fails to say whether or not its inquiry looked at the steps of the alleged ordered combination "as a whole". Looking at the steps as a whole as opposed to looking at the steps separately is critical because even known process steps may be arranged in a unique way to represent patentable subject matter. (See, Rapid Litigation Management Ltd. v. CellzDirect, 827 F.3d 1042, 1051 (Fed. Cir. 2016), stating in dicta, "That each of the claims' individual steps (freezing, thawing, and separating) were known independently in the art does not make the claim unpatentable.").

In order to prevent courts from further abusing, ignoring, or sidestepping the 35 U.S.C. § 101 framework for determining patentable subject matter, legislative reform is necessary. Current proposed amendments to § 101 include removing the word "new" from the text of the statute. This may help prevent courts from substituting an in-depth obviousness analysis with the gate-keeping function of the § 101 inquiry.

#subjectmattereligibility

The Newest Double Standard from the CAFC: Relation Back Doctrine

 

Although there is much debate surrounding the current state of our nation's patent system, this piece does not address any possible double standards that may exist in the system as a whole. (See, Comment 6 to "America’s Patent System Favors the Few and Inhibits Innovation—But Change Could Be Coming"). Rather, this piece focuses on one of the newest opinions decided by the CAFC regarding the relation back doctrine.

Yesterday, the CAFC decided Anza Tech., Inc., v. Mushkin., Inc., reversing in part the US District Court for the Eastern District of California's application of the relation back doctrine. The relation back doctrine, at a federal level, may be summarized by Rule 15(c)(1)(B), which states, "An amendment to a pleading relates back to the date of the original pleading when . . . the amendment asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out or attempted to be set out--in the original pleading."

In Anza, the relation back doctrine is significant because Anza filed a first complaint, entered mediation with Mushkin, then filed a second amended complaint. (Anza, No. 2019-1045 at 5). Because the allegedly infringing activity took place more than six years before the filing date of the second amended complaint, the second amended complaint would have to "relate back" to the first complaint in order to avoid dismissal under the six-year statute of limitations found in 35 U.S.C. § 286. (Id. at 10).

Anza's first complaint alleged Mushkin directly infringed claims of a method of bonding integrated circuit chips using a bonding tool having a tip made of a dissipative material to prevent electrostatic discharge that may occur during bonding. (Id. at 4-5). Soon after the first complaint was filed, the parties entered mediation. (Id.at 5). During mediation, Mushkin's president stated Mushkin "did not bond IC chips to boards or modules." (Id.) Anza then amended its first complaint, including two additional patents, omitting ten of the sixteen originally accused products from the list of allegedly infringing products, and adding two new products to the list. (Id. at 6).

The district court decided that the second complaint did not relate back to the first complaint because the patents in the first complaint encompassed a method of using a wire bonding tool, while the two newly added patents involved a flip chip bonding and solder ball placement tool. (Id. at 8). Further, the district court noted that the additional products would not involve substantially the same evidence as the original products listed in the first complaint. (Id. at 9).

The CAFC reversed the California district court in part, finding (1) that the relation back doctrine is similar to a motion to sever in that it is governed by Federal Circuit law as opposed to regional circuit law (id., at 11), (2) that a double standard applies in the CAFC's standard of review of the relation back doctrine (id., at 12-13), and (3) that a determination that a second complaint relates back to the first complaint should include determining whether there is substantial overlap in the facts of the complaints that would place the defendant on notice of allegations it would be required to defend (id., at 21-22). The double standard allows the CAFC to use a de novo standard to determine that claims amended into subsequent complaints "[arise] out of the conduct, transaction, or occurrence" found in the original complaint, and to use a clear error standard for disputed facts material to the relation back issue.

A significant factor in the CAFC's decision was the liberal interpretation of the relation back doctrine by the Supreme Court. (See, Tiller v. Atl. Coast Line R.R. Co., 323 U.S. 574, 580-81 (1945)). (Id., at 13-14). A liberal interpretation of the relation back doctrine seems to support the rationale that notice is the primary concern, meaning that an improper form of a complaint will not outweigh the notice of potential litigation the substance of the complaint provides. Finally, because there was an open question remaining regarding whether the two newly added products were too far afield from the original complaint to put Mushkin on notice, this issue was remanded for further proceedings and review. (Id., at 23).

The takeaway from this case is that broad allegations of infringement may be sufficient to put a potential infringer on notice. These broad complaints may even be amended to more specifically address infringement at a point in litigation that falls after the statute of limitations in 35 U.S.C. § 286 has passed.

(#relation back doctrine statute of limitations)