US patents 7,899,929 and 7,623,939 disclose patent eligible subject matter because while the claims include the abstract idea of a computer based methodology of designing tools, they also include numerous limitations that narrow the patent’s scope.
- Using a computer to design tools may be generally patentable in the US.
- Claims that are narrowed by numerous limitations may be less likely to be found abstract and consequently patent ineligible subject matter.
Broad description of the invention
In general, the patents pertain to computer software that is used to create a tool, and the tool itself, which is then used to form sheet metal into different objects, primarily automobile parts. The patents focus on the creation of the die portion of this tool. The die is custom made for each specific automobile part that is to be formed from the sheet metal. The die is composed of a component area, an addendum area, and a binder area.
- A method for designing a tool for deep drawing of sheet metal to form a sheet metal component having a predefined component geometry, said tool comprising a die, a binder and a punch, whereby the binder is used to fix the sheet metal in an edge zone of the die, before the sheet metal is pressed in a drawing direction by the means of the punch into the die, said tool comprising at least one addendum zone surrounding the component, said addendum zone is generated by a method comprising the following steps:
- arranging along the component edge at a distance from one another several sectional profiles directing away from the component edge;
- whereby the sectional profiles are parameterized by the means of profile parameters, the profile parameters being scalar values;
- laterally interconnecting the sectional profiles by a continuous surface to form the geometry of the addendum zone of the tool, whereby said addendum zone complements the component geometry in the edge zone and runs into the component and the binder with a continuous tangent.
The Defendant, Engineering Technology Associates, INC, alleged that the ‘939 patent does not pass the “machine-or-transformation” test of patentability, and ‘939 does not cover patentable subject matter under U.S.C. § 101 as it pertains to an abstract idea.
According to the machine-or-transformation test, a claim can be analyzed to determine whether (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)(Bilski I). Specifically, the “use of a specific machine-or- transformation of an article must impose meaningful limits on the claim’s scope to impart patent eligibility.” Id. at 1396. The “machine-or-transformation” test is not a necessary test and a patent need not pass this test in order to meet the threshold requirements of patentability under 35 U.S.C. § 101.
As the ‘939 Patent pertains to the method of the design of addendum surfaces, rather than the literal and physical transformation of an article, it does not appear to meet the two-prongs of the “machine-or-transformation” test. His honour was of the view that, the application of this test itself is not sufficient to invalidate the ‘939 patent.
Engineering Technology Associates alledged that both the ‘939 and ‘929 Patents are not patent-eligible because they pertain to unpatentable abstract ideas, which is again impermissible under 35 U.S.C. § 101.
The subject matter eligibility requirement of 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.” 35 U.S.C. §101. Thus, Section 101 provides four independent categories of inventions that are eligible for patent protection: processes, machines, manufactures, and compositions of matter. Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010) (Bilski II). In interpreting 35 U.S.C. §101, the Supreme Court has expressly excluded three categories from patent protection which are generally referred to as the judicial exceptions to subject matter eligibility: “laws of nature, physical phenomena, and abstract ideas.” Id. at 3225. Engineering Technology Associates focused on the last of these three judicial exceptions.
Engineering Technology Associates extensively argued that the patents at issue address abstract ideas, placing particular emphasis on the argument that the methods involved simply describe mental processes. See Cybersource Corp. v. Retail Decisions Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). His Honour was of the opinion that while the patent may include or rely on some basic concepts in the design of sheet metal forming tools, the patents also include numerous limitations that narrow the scope of the patent. For example: (1) smoothing an irregular component edge; (2) filling in a fill surface; (3) forming a smooth component edge; (4) where the fill surface runs into the predefined component geometry by a continuous tangent; (5) arranging sectional profiles along the smooth component edge; (6) avoiding an overlap or intersection condition between sectional profiles; (7) parameterizing the sectional profiles by the means of profile parameters; (8) the profile parameters being scalar values; (9) laterally interconnecting the sectional profiles by a continuous surface to form the geometry of the addendum zone of the tool; and (10) where the addendum zone complements the component geometry in the edge zone and runs into the component and the binder with a continuous tangent. As such, Engineering Technology Associates failed to overcome the presumption of patentability with clear and convincing evidence. See Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1342 (Fed. Cir. 2013); see also SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006)
Engineering Technology Associates went on to argue that the fact that the ‘929 Patent translates these alleged abstract ideas to a generic computer automation is insufficient to render the subject matter patent-eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357, 189 (2014)(“[T]he method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention.”) However, because the ‘939 Patent covers more than a mere abstract idea, this argument was found to be unpersuasive.