R+L Carriers, Inc. v. Intermec Technologies Corp. (Supreme Court 2018)
In its newly filed petition, R+L asks the Supreme Court to add further depth to the abstract-idea analysis. Namely, the the patentee asks whether Step 1 of Alice can be performed “without analyzing the requirements of the individual claim steps?” The petition also raises the important question of whether the eligibility analysis allows for any factual inquiry.
R+L’s patent No. 6,401,078 claims a self-identified business method “for transferring shipping documentation data:”
When using the business method claimed … drivers scan each customer’s shipping documents when they pick up the customer’s freight, and wirelessly transmit those documents from the truck to the terminal. Load planners then use the information from those documents, such as the freight’s destination, weight, contents and specific handling instructions, to prepare loading manifests for the freight’s further transport to its next destination.
The district court dismissed the infringement lawsuit against Intermic on summary judgment – holding that the ‘078 Patent is directed to an unpatentable abstract idea. On appeal, the Federal Circuit affirmed without opinion (R.36).
The petition’s main thrust follows:
The District Court’s decision in this case is emblematic of the results produced by the inconsistent and unpredictable application of § 101 precedent. Although the District Court concluded that the ‘078 Patent is directed to an abstract idea, it could not come up with a consistent characterization of what that abstract idea was. It variously described what it considered to be the abstract idea to which the representative claim was directed as (1) “creating an advance loading manifest”; (2) “the process of receiving transportation documentation and producing advance loading manifests therefrom”; (3) “getting shipping information to the load planners faster”; and (4) “it is even possible [that it is] … creating a loading manifest.”
The District Court’s confusion is the product of the contradictory direction by the Federal Circuit on how to determine what the claim is “directed to.” One panel said that courts should look to “capture … the ‘basic thrust’ of the Asserted Claims.” Synopsys Inc. (quoting BASCOM). Yet another panel stated that “courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO.
Here, the District Court took the high-level approach of attempting to capture the basic thrust of the claims that the Synopsys panel endorsed. In doing so, it arrived at a characterization of the patent that could not be anything but an abstract idea. On the other hand, had the District Court viewed the claims as an ordered combination in accordance with the McRO directive, it would have seen that the patent is directed to a method that employs communication technology to transmit information about an incoming package so that outbound load planning for that package can be accomplished before the package arrives at the terminal. . . . Since the ‘078 Patent does not merely recite a result, but rather a method with specific structure for achieving the method’s goal in a particular manner, it would have survived the eligibility challenge had the District Court followed the direction of the McRO panel rather than that of the Synopsys panel.
An incorrect characterization of what the claims are directed to has other consequences under Step 1 of the Alice test. Here, the District Court found that “preparing a loading manifest” is a conventional business practice because loading manifests existed before the application date of the ‘078 Patent. If that were an accurate characterization of the representative claim, then R+L would agree with the District Court’s conclusion. But if the District Court had taken into account the specific requirements of the claim and had avoided oversimplifying it, it would have had to find (at least on the summary judgment record before it) that the ‘078 Patent was not directed to “a fundamental economic practice long prevalent in our system of commerce[.]” While loading manifests themselves certainly existed before the ‘078 Patent, the undisputed evidence in the summary judgment record established that the particular method claimed in the patent did not.