VEHICLE INTELLEGENCE AND SAFETY LLC v. MERCEDES-BENZ USA, LLC, DAIMLER AG No. 2015-1411 (Fed. Cir. 2015)

Claims of US patent 7,394,392 in the name of Vehicle Intelligence and Safety LLC were found not to be patent eligible subject matter under 35 USC 101 because the claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity.

  •  A claim that is drafted to a high degree of generality may be considered directed to an abstract idea, which may result in the claim being found non patent-eligible.  Non-specific structural features may not be sufficient to overcome this characterisation.
  • An invention may be considered directed to an abstract idea if it can be characterised as being analogous to a common task performed without the aid of new technology (e.g. breath testing by a police officer).
  •  Technical features of the claims must be described in detail within the patent specification, including how they work and how their advantages are achieved.
  • Narrow and well supported claims should be included in the patent specification.

Broad description of the invention
The abstract of the ‘392 patent claims methods and systems that screen equipment operators for impairment, selectively test those operators, and control the equipment if an impairment is detected.  The equipment includes vehicles and dangerous machinery in general. Types of impairments contemplated include intoxication, physical impairments, medical impairments, and emotional impairments.
Characteristic Claim
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.
Details
It was not disputed that the claims at issue fall within the broad categories identified in section 35 USC 101 “Patentable inventions” (i.e. “any new and useful process, machine, manufacture, or composition of matter, or any useful improvement thereof.  The question put before their Honours was whether the claims fall into a judicially created exception of patent-eligible abstract ideas.
Their Honours applied the two-step test introduced by Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296-98 (2012), and developed by Alice Corp. Party v CLS Bank International, 134 S. Ct. 2347, 2355 (2014).
The first step in the two-step test is to determine whether the claims at issue are directed to a patent-ineligible concept.  The second test is to examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.  Transformation into a patent eligible application requires more than stating the abstract idea while adding the words apply it (quoting Mayo, 132 S. Ct at 1294).
Applying the first step, their Honours were of the view that the claims are directed to a patent-ineligible concept, specifically the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment. None of the claims 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 of the vehicle in response to the test results.
It appears that that the breadth of the claims was an important factor in their Honours decision.
Their honours focussed on the claimed feature of an “expert system”.  They noted that while it was claimed that the use of expert systems results in faster, more accurate and reliable impairment testing, neither the claims nor the specification provide any details as to how the expert system worked.  In their opinion, critically absent was how the existing vehicle equipment can be used to measure these characteristics, how a “decision determining module” determines if an operator is impaired on these measurements, how the decision module decides which control response to make, and assuming the control response decision can be made, how the expert system effectuates the chosen control response.
Because the specification merely states “use an expert system”, in the absence of any detail the claims at issue are drawn to a patent-ineligible abstract idea, satisfying step one of the two-step test.
Applying the second step, their Honours were of the view that the claims at issue fail step two, because nothing in the claims – considered as individual elements or an ordered combination – disclose an inventive concept sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.
The patentee argued that the methods are embedded in specialised modules as opposed to generic computers, however their Honours rejected any notion that this confers patent-eligibility, noting that firstly the specification did not explain how they are different.  Their Honours were of the view the this argument was the pre-Alice Machine-or-transformation test that post Alice was not longer sufficient to confer patentability. Merely stating that the methods at issue are performed on already existing vehicle equipment, without more, does not save the disputed claims from abstraction.
Their Honours where of the opinion that the claims merely state the abstract idea of testing an equipment operator for impairments using an unspecified “expert system” running on equipment that already exists in various vehicles.  This is not sufficient to pass the two-step test.

The honours understood the problem addressed by the invention as broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field-testing a driver for sobriety, and was not “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”, (DDR Holdings 773 F.3d at 11257).  Bald assertions regarding the advantages of expert systems made at such a high level of generality and not tied to any claim language do not provide an “inventive concept” sufficient to save these claims from patent-ineligibility.

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