In a recently issued Commission Opinion, the ITC affirmed the ALJ's finding that the asserted claims of U.S. Patent No. 9,045,871 (the '871 patent) are invalid as directed to an abstract idea. Certain Road Construction Machines & Components Thereof, Comm'n Op., Inv. 337 TA 1088 (July 15, 2019). We have previously reported on this investigation regarding whether a prototype built abroad satisfies domestic industry requirements, whether the domestic industry requirement necessitated the sale of a product prior to filing a complaint, and whether all complainants need standing at the ITC.
The '871 patent is directed to a road paving machine with an adjustable screed assembly, which is a device attached at the rear of a paving machine to spread and compact paving material into a layer of "desired thickness, size, and uniformity." In order to do that, the paving machine and the screed assembly require a large number of adjustment parameters. The '871 patent discloses a system of sensors and a controller that allows the machine to detect and store the adjustment parameters.
In affirming the ALJ, the Commission applied the Alice framework to analyze the eligibility of the '871 patent. The Commission found that the asserted claims were directed to an abstract idea under Alice step one. In the Commission's characterization, the abstract idea was "automating the settings of a paving machine's screed assembly by using conventional electronic components that substitute for a user's selection of the machine's settings by sensing, storing, and recalling the user's earlier choice of settings in order to automatically adjust the screed according to the stored user setting data." The Commission reasoned that "simply limiting the abstract idea to paving machines does not make the idea patentable," and "the fact that the asserted claims are direct to physical phenomena . . . is beside the point."
Next, under Alice step two, the Commission found that the asserted claims also lacked any inventive concept because they merely recite the use of standard electronic components to improve the functionality of a paving machine. For example, the Commission analyzed claim 1 as claiming "a generic controller that functions in a conventional way to collect, manipulate, and communicate data for adjusting conventional screed assembly components." Overall, the Commission found the invention uses "well-understood, routine, and conventional components previously well-known to the industry," and therefore affirmed that the asserted claims of the '877 patent were invalid under § 101.
Notably, Commissioner Rhonda Schmidtlein filed a dissenting opinion on the § 101 issue. She too applied the Alice framework but found that the patent was not directed to an abstract idea under Alice step one. She reasoned that step one of the Alice test "is not a pursuit for the abstract idea underlying the claim" because at some level, all inventions embody, use, reflect, rest upon or apply an abstract idea. Instead, Commissioner Schmidtlein emphasized that the concern that underlies the abstract idea exception was one of preemption. That is, whether the patent claims a basic building block of scientific or technological activity so as to foreclose or inhibit future innovation. She noted that the claims of the '871 patent tie the invention to a physical paving machine with certain components, which meaningfully limit the claims and do not preempt any underlying abstract idea.
Commissioner Schmidtlein also found it problematic that the Commission Opinion had analogized the '871 patent to the Federal Circuit's case law involving software patents. She stressed that the '871 patent uses mechanical components to direct physical operations of an actual machine, which is critically different from software patents directed to collecting, analyzing, and displaying information on a generic computer.
Finally, Commissioner Schmidtlein viewed as inappropriate the Commission's finding that the '871 patent was "conventional" under § 101, which she indicated was a question reserved for §§ 102 and 103.
The jurisprudence on subject matter eligibility has evolved to a complex labyrinth which can be difficult to navigate. Both complainants and respondents at the ITC must carefully evaluate the impact of patentability challenges under § 101 on their case, just as they would in any other forum, and should be aware that the Commission is willing to invalidate patents under § 101.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.