United States: SemaConnect Wins Dismissal Of ChargePoint's Patent Lawsuit

  • A federal court dismissed claims of patent infringement brought by ChargePoint, Inc. against a rival in the EV charging station market, SemaConnect, Inc. The court found ChargePoint's asserted patents to claim inventions that are ineligible for patent protection and thus unenforceable against SemaConnect.
  • ChargePoint has appealed the decision to the U.S Court of Appeals for the Federal Circuit, which will hear arguments between the parties.

Electric vehicle (EV) charging station provider SemaConnect Inc. won dismissal of a patent infringement lawsuit brought in federal court in Maryland. The lawsuit, brought by ChargePoint Inc., was thrown out after the court found that all four of ChargePoint's asserted patents claim inventions that are ineligible for patent protection. Specifically, the court found that the patents claim nothing more than an "abstract idea" as their invention.

SemaConnect CEO Mahi Reddy called the result a "vindication of our effort to support open standards and interoperability of charging networks and stations." He added that "this outcome is also a big win for the charging industry, the electric vehicle industry, and utilities."

The lawsuit was filed just three months ago, with ChargePoint requesting that the court enter an emergency injunction to prevent SemaConnect from delivering EV charging stations in fulfillment of a contract with Electrify America, the VW subsidiary that has pledged to spend $2 billion on EV infrastructure. Both SemaConnect and ChargePoint made bids on the contract, with ChargePoint bringing the patent lawsuit after the contract was awarded to SemaConnect. (See our post describing the initial lawsuit here).

By requesting an emergency injunction, ChargePoint's case received immediate attention from the court. An initial hearing was held just one week after the lawsuit was filed, and the court denied the emergency injunction soon after that.

SemaConnect quickly followed with a motion to dismiss the case, asserting that ChargePoint's patents were invalid for claiming inventions that are ineligible for patent protection. (See our post describing the motion to dismiss here). After briefing from the parties, the court agreed with SemaConnect and found that each asserted patent was directed to nothing more than an abstract idea. Under U.S. patent law, "laws of nature, natural phenomena, and abstract ideas" may not be patented. Any patent granted by the U.S. Patent and Trademark Office but later found to be directed to one of these ineligible subject matters is invalid and cannot be enforced against other parties.

The Supreme Court has laid out a two-step process for evaluating claimed inventions for patent eligibility:

  1. Determine whether the entire claimed invention is merely an abstract idea; and
  2. If the entire claimed invention is merely an abstract idea, determine whether the claimed invention includes additional elements that result in a technical improvement over existing technology.1

In agreeing with SemaConnect, the court issued a substantial, 70-page opinion explaining the decision to dismiss the case. As an example of the analysis performed by the court, the claimed invention (Claim 1) of ChargePoint's U.S. Patent No. 8,138,715 is reproduced below:

  1. An apparatus, comprising:
  2. a control device to turn electric supply on and off to enable and disable charge transfer for electric vehicles;
  3. a transceiver to communicate requests for charge transfer with a remote server and receive communications from the remote server via a data control unit that is connected to the remote server through a wide area network; and
  4. a controller, coupled with the control device and the transceiver, to cause the control device to turn the electric supply on based on communication from the remote server.

For the first step, the court found Claim 1 to be "directed to sending a request, receiving a command, and executing the command over a network to operate an EV charging station in an expected way." The court noted that although Claim 1 recites certain hardware – which would tend to indicate that the claimed invention is not abstract – the recited hardware is merely "generic computer and networking equipment [used] to achieve the result of operating an EV charging station as it otherwise would be operated without network connectivity." As a result, the hardware "serve[s] as nothing more than a conduit for the abstract idea" that is the claimed invention.

Turning to the second step, the court failed to find any technical improvements over existing technology. Instead, the court noted that the hardware recited in Claim 1 "[was] well-known, routine, and conventional" in the relevant technological field. Without a finding of technical improvements, Claim 1 was found to be ineligible for patent protection and thus unenforceable against SemaConnect. The court performed similar analysis and arrived at a similar conclusion for each of the other asserted patents.

ChargePoint has already announced that it will appeal the decision to the U.S. Court of Appeals for the Federal Circuit. ChargePoint spokesman Darryll Harrison said the company was "disappointed in the judge's ruling to dismiss the patent infringement claim and has appealed." He further noted that ChargePoint "has been consistent in our assertion that the patent litigation is about protecting ChargePoint's intellectual property against actions that will harm it."

If ChargePoint is successful on appeal, the case would likely return to federal court in Maryland for trial. However, if the Federal Circuit agrees with the Maryland court that ChargePoint's patents claim ineligible subject matter, then ChargePoint's lawsuit would likely be dismissed in its entirety.

Footnote

[1] This two-step framework was articulated by the Supreme Court in 2014 in the case of Alice Corp. v. CLS Bank International. Notably, the patents asserted by ChargePoint against SemaConnect were granted by the U.S. Patent and Trademark Office before the Alice decision, meaning that these patents were examined for eligibility under earlier and different standards.

Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.

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