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Oh Lord Let Me Drive My Mercedes Benz

Oh Lord Let Me Drive My Mercedes Benz

Janis Joplin is famous for asking the Lord to buy her a Mercedes Benz. Presumably she would have wanted to drive the car even if she were intoxicated or otherwise impaired.

The Court of Appeals of the Federal Circuit recently decided   (in Vehicle Intelligence v. Mercedes-Benz December 28, 2015) that some claims directed to a “method to screen an equipment operator for impairment” are patent ineligible under §101 as being directed towards an abstract idea.

However, the CAFC did not invalidate slightly narrower claims in the same patent which are directed towards a “method to screen an equipment operator for intoxication” because those claims were not at issue. The difference is moot for Janis but those of us that still want to drive, and understand how §101 is being viewed by the courts have a lot to learn from this case.

Vehicle Intelligence and Safety had sued Mercedes Benz USA for infringement of US 7,394,392 in the Northern District of Illinois. The district court ruled claims 8, 9 and 11-18 patent ineligible under §101 as being directed towards an abstract idea.The CAFC affirmed that decision indicating that the “…disputed claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity…”

The ‘392 patent contains two independent method claims, 1 and 8. They are reproduced side by side here with each step in boldface and differentiating language underlined:

 

1. A method to screen an equipment operator for intoxication, comprising:

screening an equipment operator by one or more expert systems to measure at least one type of chemical in the air in proximity to the equipment operator to detect potential intoxication;

selectively testing said equipment operator when said screening indicates potential intoxication of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said intoxication of said equipment operator.

8. A method to screen an equipment operator for impairment, comprising:

screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;

selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

Each of claims 1 and 8 recites three steps: screening, selectively testing and controlling operation. The preamble of claim 1 is narrow (screen… for intoxication) while the preamble of claim 8 is broader (screen…for impairment).

The screening step of claim 1 is likewise narrower (measurechemical in the air in proximity to the equipment operator to detect potential intoxication) relative to the corresponding step in claim 8 (detect potential impairment).

 

This difference in scope is repeated in the selectively testing step (claim 1 potential intoxication vs claim 8 potential impairment) and again in the controlling operation step (claim 1 indicates said intoxication vs claim 8 indicates said impairment).

 

Up to this point the draftsman of the claims has limited claim 1 to the species “intoxication” while directing claim 8 towards the entire genus of “impairment”.

 

In order to limit the scope of claim 8, that claim recites a limitation on the screening which is not parallel to claim 1:  wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

 

Claim 1 meets the requirements of §101 while claim 8 does not. Since the issue is abstract ideas as evaluated by the Mayo/Alice test we can infer that claim 1 is significantly more than the abstract idea of “…testing operators of any kind of moving equipment for any kind of physical or mental impairment” because (a) it recites a specific impairment type (intoxication) and/or (b) it recites a specific screening method (measurechemical in the air in proximity to the equipment operator). Inference is required because claim 1 was not reviewed on appeal.

In contrast, the Court equated the broad scope of claim 8 with abstraction:  “None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.”

Claim 11 (dependent from claim 8) is interesting in this regard because it recites a Markush Group list of physiologic parameters of the operator. However, the claim preamble indicates “…further comprising measuring…” so that the physiologic parameters are assigned neither to the screening nor to the testing of base claim 8. Under those circumstances the court did not find this claim instructive as to how to perform either screening or testing for any impairment even though one of the parameters in the Markush Group is chemical in proximity to the equipment operator which is similar to claim 1.

There are at least four lessons to be learned from this case:

The first lesson is that broad claim scope may be interpreted as abstraction.

The second lesson is that the Court reviewed the specification before rendering a decision on whether the claims contained “significantly more” than the abstract idea. This implies the degree of abstractness (or definiteness) of claim language is related to corresponding explanatory passages in the specification.

The third lesson is that the Court took a dim view of the patentee’s attempts to link the claim language to a particular machine:

“Vehicle Intelligence’s argument harkens back to our preAlice machine-or-transformation test in arguing that the claimed methods are tied to particular machines and that alone is sufficient to confer eligibility. But, postMayo/Alice, this is no longer sufficient to render a claim patent-eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Merely stating that the methods at issue are performed on already existing vehicle equipment, without more, does not save the disputed claims from abstraction.”

The fourth lesson is that the Court views its own earlier decision in DDR holdings as being narrowly applicable to computer networks:“The claims at issue are not “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” as in DDR Holdings. 773 F.3d at 1257. The claims do not address a problem arising in the realm of computer networks—they are broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field testing a driver for sobriety.”

Although this decision is marked non-precedential it is worth considering when drafting a set of claims.

 

 

 

 

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