Written by: Andrew J. Koopman
In ChargePoint, Inc. v. SemaConnect, Inc., the Federal Circuit has affirmed a ruling of patent ineligible subject matter for four patents covering electric vehicle charging technology. The Court’s ruling, which affirmed the District of Maryland’s grant of a motion to dismiss under 35 U.S.C. § 101, sheds doubt on the vitality of the recent subject matter guidance issued by the U.S. Patent and Trademark Office (USPTO).
ChargePoint’s patents cover various features of its electric vehicle charging stations. As one example, claim 1 of U.S. Patent No. 8,138,715 recites a control device, a transceiver, and a controller which exchange communications for the purpose of turning on and off an electric supply for charging electric vehicles. Other claims in the case recite additional physical components, including a charge transfer device, a current measuring device, or an electrical receptacle configured to receive a connector from the electric vehicle.
The Court began its analysis by stating that claim 1 of the ‘715 Patent clearly involves the abstract idea of “communication over a network.” Correctly noting that the Alice framework requires a determination of whether claims are “directed to” an abstract idea, the Court then turned to a review of the specification. The Court found that the description of the invention contained in the specification was essentially limited to “network-controlled charging stations.” According to the Federal Circuit, “the invention of the patent is nothing more than the abstract idea of communication over a network for interacting with a device, applied to the context of electric vehicle charging stations.” The Court concluded that ChargePoint’s claims would preclude the use of any network-connected electric vehicle charging station.
Proceeding to the second step of the Alice framework, the Federal Circuit found that the claims did not include “significantly more” than the identified abstract idea. According to the Court, the claims’ inventive concept was directed to solving problems in the remote control and deployment of electric vehicle charging stations. Because the Court concluded that the claims solved that problem only through their incorporation of the abstract idea of “network communication,” it held that the abstract idea could not save the claims’ eligibility.
The Federal Circuit rejected ChargePoint’s arguments that the claims improve an existing machine, i.e. by building a better charging station, stating that under Alice a claim’s association with a physical machine was not dispositive. The Court likewise rejected arguments that the claims of ChargePoint’s other patents, which incorporated significantly more physical components, could transcend the limited scope of the invention set forth in the patents’ shared specification. Finally, the Court rejected an argument, based on BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that ChargePoint’s claims represented an improvement on the intrinsic function of conventional charging stations. According to the Court, ChargePoint’s patents were an “abstract-idea-based solution implemented with generic technical components in a conventional way.”
The Federal Circuit’s expansive application of § 101 in ChargePoint portends serious consequences for the USPTO’s recent § 101 guidance. In January of 2019, the USPTO announced an overhaul of its application of § 101, in a move which has already seen a fall in patentable subject matter rejections of pending applications. In the first part of its guidance, the USPTO announced three specific categories of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes. According to the USPTO, claims which do not recite one of these ideas will not be rejected under § 101 except in rare circumstances. In the second part of its guidance, the USPTO went further, announcing that claims are not “directed to” an abstract idea under Alice “if the claim as a whole integrates the recited judicial exception into a practical application of that exception.” The guidance instructs that a claim should not be rejected where it recites the abstract idea “in a manner that imposes a meaningful limit” on the use of the abstract idea.
The Federal Circuit’s holding in ChargePoint may be impossible to reconcile with the USPTO’s 2019 § 101 guidance. ChargePoint’s claims directed to enabling or disabling charging of a vehicle with an electric power supply do not on their face fit within any of the three categories of abstract ideas announced by the USPTO. Moreover, even accepting the Federal Circuit’s identification of an abstract idea, the claims seem to integrate their subject matter into a practical, and rather limited, exception: electric vehicle charging stations. It could likewise be argued that the vehicle charging-specific components in ChargePoint’s claims “impose a meaningful limit” on its usage of network communications.
The conflict in analysis between the Federal Circuit and USPTO should not come as a surprise per se. As the Court recently noted in Cleveland Clinic Found. v. True Health Diagnostics LLC, it owes the USPTO’s standards no deference: “While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance.”
The consequences of the Federal Circuit’s recent decisions, however, cannot be ignored. As long as the USPTO continues to follow its recent guidance, the danger exists that the Office will grant patents under an application of § 101 that may not hold up in federal court. Simply put, the USPTO may be creating a new generation of patents whose validity will last only until tested under an Alice framework in federal court. Such a result is particularly unfortunate in view of the public’s positive reaction to the clarity and direction provided by the USPTO’s recent guidance. Unless the Supreme Court undertakes to clarify the law of subject matter eligibility post-Alice, the Federal Circuit’s decisions in ChargePoint and Cleveland Clinic forebode future conflict between the USPTO and courts in this unpredictable area of the law.