Eligibility: Pleadings are Enough, but they must Tie the Claims to an Inventive Concept

Cellspin Soft v. Fitbit, Moov, Nike, Fossil, etc. (Fed. Cir 2019)

The district court dismissed Cellspin’s infringement lawsuit on the pleadings — finding the asserted claims unenforceable as a matter of law under 35 U.S.C. § 101 (ineligible abstract idea).  On appeal, the Federal Circuit has vacated — holding instead that the early-stage dismissal was inappropriate because the patentee’s amended complaint included “specific factual allegations” that, when accepted as true, showed a plausible inventive concept sufficient to satisfy Alice Step 2.

The court explains here that under Aatrix, “plausible and specific factual allegations that aspects of the claims are inventive” are sufficient to overcome a pleadings-stage motion to dismiss.  “[T]he specification need not expressly list all the reasons why this claimed structure is unconventional” so long as the arguably inventive elements are “recited by the claims.”

Here, the claims recite a sensor with Bluetooth.  The claims recite a “two-step, two-device structure requiring a connection before data is transmitted.” And, the complaint identified this structure as a concrete and inventive application that goes beyond the abstract idea of “acquiring, transferring, and publishing data and multimedia content on one or more websites.”  The appellate panel found that “[t]he district court erred by not accepting those allegations as true.”

On remand, the case will move to summary judgment stage — moving beyond the mere allegations and looking at the evidence produced by both parties.  The burdens of proof and presentation at summary judgment may be confusing.  Eligibility is a question of law that does not necessarily require any evidentiary conclusions by the court.  However, we would expect that the patentee here will present some amount of evidence (probably expert testimony coupled with documentation) potentially sufficient to support a prima facie case of inventive concept under Alice Step 2.

The term inventive concept sounds very patent-like, but the law remains confused about more precise qualities of the term.  A patent claim directed to an abstract idea (or law of nature) can still be patented so long as it also recites an “inventive concept.”  Inventive Concept:

  • Something more than the application of an abstract idea using “well-understood, routine, and conventional activities previously known to the industry.”
  • Enough to “transform an abstract idea into a patent-eligible invention.”
  • More than simply “using conventional and well-understood techniques.”

Here, the court held that the patent itself must include the concept (and it must be particularly claimed) but need not explain in the specification that it represents the inventive concept. What is not clear is how directly inventive concept relates to other patentability concepts such as novelty, obviousness, and utility.

29 thoughts on “Eligibility: Pleadings are Enough, but they must Tie the Claims to an Inventive Concept

  1. 5

    How is an inventive “concept” different than an inventive abstract idea?

    1. 5.1

      It’s something more. :)

      1. 5.1.1

        It’s an undefined something more.

        1. 5.1.1.1

          It’s “enough”

  2. 4

    Dennis: What are the elements of a prima facie showing of eligibility? Examination only considers the inverse question, how to establish ineligibility of a claim (with no finding indicating eligibility).

    Essentially, patentees are being forced to prove a negative, that their claims are not ineligible.

    1. 4.1

      patentees are being forced to prove a negative, that their claims are not ineligible.

      It’s pretty easy to demonstrate eligibility (and avoid a challenge) when the point of novelty in the claim doesn’t involve an abstraction (e.g., data-processing logic or information, or some desired “functionality” divorced from the recitation of any art-distinguishing structural solution).

      And none of this is “confusing” either. It’s been the case since the beginning of the system.

      What changed (for the worse) is that (1) applicants started rushing the gates to try to protect ineligible abstractions after State Street, and particularly in the “do it on the Internet/computer” context; (2) the CAFC (e.g., disgraced Judge Rader and ment-@l incompetent Judge Rich) created some nonsensical “exceptions” out of thin air to satisfy its shiny “do it on a computer” “customers”; (3) after the Supreme Court’s decision in Mayo/Alice, the CAFC went further to create a self-contradicting hodgepodge of nonsense designed to protect certain poorly defined “kinds” of otherwise ineligible abstractions in the computing context.

      Bottom line: if you wan to avoid having the eligibility of your claim challenged, invent something that’s eligible and claim it properly. Need professional advice? Find a decent attorney.

      1. 4.1.1

        Thanks for not answering the question. Let’s try this: can you cite a case where the elements of a prima facie showing of eligibility have been set forth? Rather, to dumb it down to moon-man speak: what is the “objective structure” of a prima facie showing of eligibility?

        1. 4.1.1.1

          can you cite a case where the elements of a prima facie showing of eligibility have been set forth?

          Not offhand, but I also can’t cite a case that tells you how to make a jelly sandwich. So what? Are you unable to function without that?

          There is no “prima facie showing of eligibility” because claims are presumed to be eligible until shown otherwise. Nobody is being asked to “prove eligibility” absent a reason to challenge the claims eligibility in the first place.

          How dense are you really?

          1. 4.1.1.1.1

            Read Dennis’ comments below. He is the one that brought up prima facie showing of eligibility, not me. Assuming he is correct in his analysis of the case (which I would bet a thousand times over is more accurate than yours), this changes the paradigm of an eligibility analysis. You can go back under the bridge now.

          2. 4.1.1.1.2

            Re: “I also can’t cite a case that tells you how to make a jelly sandwich.” Funny you said that – have you forgotten the media notoriety several years ago over an issued patent on a crustless sealed edges jelly sandwich?

            1. 4.1.1.1.2.1

              peanut butter…

    2. 4.2

      BB,

      You have alighted upon something akin to my posts below.

      Sadly, I believe that this “teaching moment” will not be taken advantage of.

  3. 3

    I have long resisted the “pendulum is swinging back” narrative, but this case makes think that it is time to admit that by slow and patient effort, the CAFC has really undone the most egregious excesses of Mayo/Alice. It still remains the case that diagnostic methods and business methods are untouchable, but the gangrenous effects of Mayo/Alice could have spread much farther.

    The CAFC has effectively stopped the bleeding and cauterized the wound. It remains for Senators Tillis and Coons to graft on a workable prosthetic to restore to our patent system as much of the lost functionality as can still be salvaged. Even if the good senators’ efforts do not ultimately succeed however, at least the CAFC has brought us to a point where the worst is past. From here on out, the problem is getting better, and no longer getting worse.

    1. 3.1

      I could not disagree with you more Greg – given that the CAFC (as a whole) continues to pile on rope to the Gordian Knot.

      THIS case stands merely for one (of many) that a Pro-Patentee may arm himself with.

      THIS case does NOT stand that the CAFC (ANY portion on ANY consistent basis) had cauterized ANY substantial wound rendered by “on high” (the Supreme Court).

      It is misdirection to assert that “all the heavy lifting is done and we need not be vigilant any more.”

    2. 3.2

      I personally really hate the “pendulum swinging” metaphor, it implies capricious results-oriented decision making, without regard for natural evolution and progression in the law. The same people applauding the “pendulum swinging back” toward patent validity are the same commenters who consistently rail most of the CAFC judges as anti-patent political hacks. The tendency of people on this forum to characterize a development in the law as “pendulum swinging” is often a telltale sign that the speaker does not understand the case well enough to explain the result other than through a simplistic swinging metaphor.

      A closer analysis of this case shows no swinging in either direction. This case didn’t do many favors for the patent owner; finding that the claims were directed to an abstract idea under Alice Step 1 was a very big win for the challenger, and one I wouldn’t have suspected given the length and detail in the claims. Winning Step 1 is a huge deal.

      The patent survived simply because the Complaint alleged that there was something inventive about establishing a paired Bluetooth connection before transmitting between two Bluetooth enabled devices (a capture device and a mobile device). The court had to accept that factual allegation as true because you cannot go beyond the pleadings on a motion to dismiss. End of story. A simple procedural ruling, and a correct one under the law. Factual issues under Step 2.

      I would not be envious of the patent owner having to go back down to the district court, on summary judgment where your pleadings don’t mean anything. Anyone who’s used Bluetooth knows that it usually requires a paired connection before two devices can transmit to each other. It’s in the BT standard, and there’s nothing inventive about that. There’s a hack that lets you wirelessly transmit between unpaired devices in Bluetooth, but it’s an edge case mode that almost no one knows about, reserved primarily for unsecured data (like ads), and not the normal or default way Bluetooth operates. Certainly not the way anyone would implement transmission of captured data between two devices.

      But there was no way for the patent challenger to make that point on a motion to dismiss, because the district court is confined to the pleadings and cannot consider outside evidence. In this case, on remand and on summary judgment, the patent owner won’t be able to rely on its pleadings, it will have to enlist some expert willing to say that establishing a paired Bluetooth connection before transmitting data was somehow new, notwithstanding that that’s how Bluetooth almost always works. Hopefully the judge sees through it.

      1. 3.2.1

        LR,

        You (too) err on the “must show is new” point.

        Merely being “new” may easily be shown by 102/103 level “thinking,” and conventionality requires much more than that (e.g., widespread adoption).

        Other than that, you make excellent points.

        1. 3.2.1.1

          I’d love to see an attorney argue that an element of a technology standard isn’t conventional.

          1. 3.2.1.1.1

            I suppose that it is always possible that the patent would have a priority date before the standard became… standard. In that case, one might argue “sure, it is conventional now, but it was not then.” In this case, however, the fact that the patentee actually wrote the claim in terms of “Bluetooth” this and “Bluetooth” that would somewhat preclude the argument “it was not standard at the time.”

            Incidentally, Examiner Sulaiman Nooristany rather fell down on the job here. One is not supposed to be able to write a claim that described essential elements in terms of registered trademarks without drawing a claim objection / §112(b) rejection. These claims should not have gotten to grant as they are written.

          2. 3.2.1.1.2

            Thanks Ben – that’s nice (but what does that have to do with the point that I presented?)

      2. 3.2.2

        This. The patentee L I E D to the court to keep this case alive. The claims are junk and the end result should be ineligibility and sanctions.

        If the patentee actually invented what they are now claiming to be “inventive”, for goodness sake why not just claim it? Instead they decide to bury that widespread and valuable invention in ten paragraphs of abstract hooey? Give us a break already.

      3. 3.2.3

        I personally really hate the “pendulum swinging” metaphor, it implies capricious results-oriented decision making, without regard for natural evolution and progression in the law.

        I confess that I had not considered the capriciousness implicit in the pendulum metaphor before you mentioned it, but this is a very fair critique. I think that this decision is “results-oriented” in the best possible sense, but I certainly do not wish to intimate that it is particularly capricious. My apologies for the confusion implicit in such a poorly chosen metaphor.

        1. 3.2.3.1

          It’s not a “capricious” decision but it definitely doesn’t show what you think it shows, Greg.

          Then again, you’re understanding of subject matter eligibility is about equivalent to that of a four year old so how would possibly know?

      4. 3.2.4

        How exactly does the pendulum metaphor imply capriciousness? An oscillating trend towards a middleground between extremes is an imperfect way of exploring configurations, but it’s hardly arbitrary.

        1. 3.2.4.1

          Naturally, Lode Runner can speak for himself or herself. I agreed with Lode Runner’s characterization of “pendulum” as implying caprice, however, because the implication of “pendulum” is that the judges look at the case and do not ask themselves “what outcome is merited by the facts here?,” but instead say to themselves “we have decided the last dozen §101 cases for the challenger, so we are due to decide a few for the patentee.”

          That sort of reasoning would be capricious. I did not mean to imply that this was the sort of thinking running through the CAFC’s heads here. This is why I am trying to withdraw the “pendulum” metaphor, even as I stand behind my overall assessment of what this case tells us about the state of the development of §101 law.

  4. 2

    Witness: “The burdens of proof and presentation at summary judgment may be confusing.

    with “potentially sufficient to support a prima facie case of inventive concept under Alice Step 2.

    How much “burden” is there and what is the difference between “support” and “establish” ANY prima facie case?

    Is there a burden at all, unless the movant (and typically this would be the party MAKING THE ASSERTION that the claims are ‘directed to’ or otherwise patent INeligible matter) FIRST meets a prima facie case sufficient to overcome the statutory presence and level of validity?

    Keep in mind HERE that one of the takeaways is that the lower court view that a question of eligibility does NOT fall to that same presence and level was a mistake at law.

    1. 2.1

      Wouldn’t the party moving for summary judgment now have to prove by clear and convincing evidence that the alleged inventive concept, i.e. the two-step, two-device structure requiring a connection before data is transmitted, is merely using well-understood, routine, and conventional activities previously known to the industry?

      1. 2.1.1

        This is a bit complicated because Alice Step 2 (inventive concept) is a question of law that (according to CAFC) can be based upon underlying factual conclusions. It is only those factual conclusions that must be proven with clear and convincing evidence. The Federal Circuit has repeatedly held that a court may find no inventive concept even in the absence of any additional presented evidence. So, I would expect that we’d only get to questions of fact if the patentee first provides a prima facie case of inventive concept based upon some evidence presented.

      2. 2.1.2

        Not to pick a nit, AIGC, Inc., but your phrasing of:

        merely using well-understood, routine, and conventional activities previously known to the industry?

        is flawed.

        Your inclusion of “previously known” is a trap for the unwary and muddles the fact that the courts have already held that to meet “well-understood, routine, and conventional” that the standard is much higher than merely any 102 or even 103 consideration, and must rise to the point of widespread adaptation (and this, for the particularly claimed elements in the afforded ordered combination).

        A question or two for Prof. Crouch:

        1) You state “Alice Step 2 (inventive concept) is a question of law” as a lead in premise to your statement as to what the CAFC has stated can or cannot be done in a “law” versus “fact” (versus law with underpinning facts) basis.

        Not so fast.

        Which explicit section of law is it that provides for this “inventive concept” animal?

        And yes, I am looking for statutory law – not newly inserted Judicial Branch Common Law law writing.

        2) I see how you are leading into the notion that some factual matter must be “in contention” in order for the court to NOT bypass any particular facts of a case at hand with their “question of law.” But is this truly a proper use of the term “prima facie” case? Is not the mere presence of a properly pled complaint (since in such cases, facts are to be taken in a certain view) sufficient? Is that not what this case is telling everyone?

        GIVEN the actual lack of legal tie-in with 1), and the apparent “over-read” related to 2), what actual point at law must a patentee be guided by?

  5. 1

    The dearth of actually explained (defined) and Congress-written legislatively supported statutory law supported terms in the re-scrivined Supreme Court law of 35 USC 101 should make it abundantly clear that the Kavanaugh Scissors are a tool that every patent holder [and every Amici] should be reminding the Supreme Court about.

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