Eligibility: ChargePoint takes its Network-Controlled Charging Station to the Supreme Court

by Dennis Crouch

ChargePoint, Inc., v. SemaConnect, Inc. (Supreme Court 2019) [Petition]

Another new eligibility petition, this one filed by by top Supreme Court Carter Phillips. Questions presented:

  1. Whether a patent claim to a new and useful improvement to a machine or process may be patent eligible even when it “involves” or incorporates an abstract idea.
  2. Whether the Court should reevaluate the atextual exception to Section 101.

I drive a Honda Clarity — a Plug-in Hybrid Electric Vehicle (PHEV) — and use ChargePoint connected charging stations when I travel out of town. The patent here — U.S. Patent No. 8,138,715* — essentially covers remote-control of the charging station (i.e., via your phone). Asserted claim 1 requires a transceiver that receives a “turn on” signal from a remote server. The transceiver then sends a signal to a “controller” that then triggers a switch (“control device”).  Dependent claim 2 adds an electrical coupler whose electric supply is switched on/off by the control device. My understanding is that all of these items could be configured within item 110 (below) that the inventors lexicographed as a “Smartlets™” — although the claims do not require the apparatus to take the cute boxy-shape displayed below. 

The district court dismissed the case for failure to state a claim — finding the claims ineligible as a matter of law. On appeal, the Federal Circuit affirmed with the following holdings:

Alice Step 1: The focus of the claims – as a whole – is the abstract idea of the internet-of-things (IoT):  “communication over a network to interact with a device connected to the network.” In reaching that conclusion, the court looked to “problem” identified in the specification — a lack of communication network to allow for efficient charging control, including paying for the electricity consumed. From the specification, the court found it “clear that the problem perceived by the patentee was a lack of a communication network for these charging stations, which limited the ability to efficiently operate them from a business perspective.”

In short, looking at the problem identified in the patent, as well as the way the patent describes the invention, the specification suggests that 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 went-on to hold that the claim breadth “would preempt the use of any networked charging stations.”

Alice Step 2: At step-2, ChargePoint argued that it solved practical problems in the field by creating a new way of remote control and network control of a charging system. The problem for the Court was that the alleged inventive concept here is network control — which the court already found to be the problematic abstract idea.

The court gives ChargePoint props for a good idea and implementation — but the problem here really is the breadth of the claims that basically join together two well-known concepts.

In short, the inventors here had the good idea to add networking capabilities to existing charging stations to facilitate various business interactions. But that is where they stopped, and that is all they patented. We therefore hold that claim 1 is “directed to” an abstract idea. As to dependent claim 2, the additional limitation of an “electrical coupler to make a connection with an electric vehicle” does not alter our step one analysis.

Id.

The petition calls-out Alice as a “failed experiment” especially when placed “in the Federal Circuit’s hands.”

[T]he Federal Circuit and various parties have used the chaos that has trailed the Court’s decision to eliminate numerous patents. Indeed, the period following Alice has seen, by one estimate, a 914% increase in the number of patents invalidated under Section 101. [Citing Sachs]. Alice’s warning to “tread carefully in construing [the Section 101] exclusionary principle lest it swallow all of patent law,” 134 S. Ct. at 2354, has largely been realized.

Petition.

= = = =

Four patents at issue in the case: U.S. Patent Nos. 8,138,715; 8,432,131 (“the ʼ131 patent”); 8,450,967 (“the ʼ967 patent”); and 7,956,570 (“the ʼ570 patent”). All share the same specification.

Claims 1 and 2 of the ‘715 patent:

1. An apparatus, comprising:

a control device to turn electric supply on and off to enable and disable charge transfer for electric vehicles;

a transceiver to communicate requests for charge transfer with a remote server and receive communications from the remote server via a data control unit that is connected to the remote server through a wide area network; and

a controller, coupled with the control device and the transceiver, to cause the control device to turn the electric supply on based on communication from the remote server.

2. The apparatus of claim 1, further comprising an electrical coupler to make a connection with an electric vehicle, wherein the control device is to turn electric supply on and off by switching the electric coupler on and off.

Claim 1 and 8 of the ‘131 patent:

1. An apparatus, comprising:

a control device to control application of charge transfer for an electric vehicle;

a transceiver to communicate with a remote server via a data control unit that is connected to the remote server through a wide area network and receive communications from the remote server, wherein the received communications include communications as part of a demand response system; and

a controller, coupled with the control device and the transceiver, to cause the control device to modify the application of charge transfer based on the communications received as part of the demand response system.

8. The apparatus of claim 1, wherein the communications received as part of the demand response system include power grid load data, and wherein the controller is further to manage charge transfer based on the received power grid load data.

Claims 1 and 2 of the ‘967 patent:

1. A method in a server of a network-controlled charging system for electric vehicles, the method comprising:

receiving a request for charge transfer for an electric vehicle at a network-controlled charge transfer device;

determining whether to enable charge transfer;

responsive to determining to enable charge transfer, transmitting a communication for the network-controlled charge transfer device that indicates to the network-controlled charge transfer device to enable charge transfer; and

transmitting a communication for the network-controlled charge transfer device to modify application of charge transfer as part of a demand response system.

2. The method of claim 1, wherein determining whether to enable charge transfer includes validating a payment source for the charge transfer.

Claims 31 and 32 of the ‘570 patent:

31. A network-controlled charge transfer system for electric vehicles comprising:

a server;

a data control unit connected to a wide area network for access to said server; and

a charge transfer device, remote from said server and said data control unit, comprising:

an electrical receptacle configured to receive an electrical connector for recharging an electric vehicle;

an electric power line connecting said receptacle to a local power grid;

a control device on said electric power line, for switching said receptacle on and off;

a current measuring device on said electric power line, for measuring current flowing through said receptacle;

a controller configured to operate said control device and to monitor the output from said current measuring device;

a local area network transceiver connected to said controller, said local area network transceiver being configured to connect said controller to said data control unit; and

a communication device connected to said controller, said communication device being configured to connect said controller to a mobile wireless communication device, for communication between the operator of said electric vehicle and said controller.

32. A system as in claim 31, wherein said wide area network is the Internet.

36 thoughts on “Eligibility: ChargePoint takes its Network-Controlled Charging Station to the Supreme Court

  1. 5

    I understand the mantra that you can invalidate patent claims under one or several sections of the patent act and it does not much matter which, but since 101 is a threshold question, it’s the fastest and cheapest in many instances, so why not use it?

    But why wouldn’t this junk just go out on obviousness grounds? Isn’t the Alice two-step just really a simplified, common sense obviousness and/or written description test?

    In my scheme, these claims cover eligible subject matter- they just to not add up to an invention because they are dead obvious.

    Is it a method? Yes

    Is the result of the method an item of information? Yes (the signal to power the charger is the result of the method)

    Does the utility of the information arise from it’s meaning to human beings? No, the information is used by the charger to control its power state.

    Eligible.

    1. 5.1

      Of course the claims are also obvious. There is nothing new here except for the layering of the “car charging” context onto the pre-existing (and ancient) Internet.

      Of course, Carter Phillips has some really awesome arguments about commercial success and industry praise (LOL), which rely on that special flavor of activist judge-created law that is approved by the patent maximalists who otherwise never stop screeching about such terrible breaches of the Separation of Derp Powers.

    2. 5.2

      Re: “I understand the mantra that you can invalidate patent claims under one or several sections of the patent act, and it does not much matter which, but since 101 is a threshold question, it’s the fastest and cheapest in many instances, so why not use it?”
      This is a good summary of the reality, despite all efforts to attack it with personal opinions and losing cert petitions. [And BTW “fastest and cheapest” can easily be years and millions.]

    3. 5.3

      But why wouldn’t this junk just go out on obviousness grounds? Isn’t the Alice two-step just really a simplified, common sense obviousness and/or written description test?

      Because the office does not do written description in the context of computers outside of new matter, and because the obviousness analysis is subject to a max number of references rule.

      Presumably the network was one reference, the electric vehicle was one reference, and you probably needed a third reference for the “demand response” feature, and it happened at a time where three references was sufficient to declare something non-obvious.

      In short, pursuant to the office’s policy of not rejecting everything that is rejectable, this rejectable claim was not rejected. Everything is operating as it should.

      1. 5.3.1

        Martin can speak for himself, of course, but I do not think that he was asking about an examination context. I think that he was asking why the court challenge was predicated on §101 instead of §103.

        1. 5.3.1.1

          “why the court challenge was predicated on §101 instead of §103.”

          Because . . . “abstract.”

        2. 5.3.1.2

          The why is a given: cheaper and faster, at the cost of a muddled construction of the notion of eligibility between the vernacular and the art of patent litigation.

          My point is that until a distinction and commiserate procedure is made between abstract claims and abstract inventions, the muddle will never clear.

          1. 5.3.1.2.1

            My apologies, Martin. I rather regret putting words in your mouth now.

        3. 5.3.1.3

          > Martin can speak for himself, of course, but I do not think that he
          > was asking about an examination context. I think that he was asking
          > why the court challenge was predicated on §101 instead of §103

          With respect, I’d assume that Martin is a patent prosecutor with little familiarity of litigation. Because it’s hard to imagine an intelligent litigator actually asking that question with any sincerity. The reason you’re seeing so many 101 challenges is because the differences between 101 and 103 in district court, in terms of cost, likelihood of success, etc., are night and day. It is exceedingly difficult and costly to succeed on a 103 challenge in district court, no matter how dumb the patent might be, and it’s almost unheard of to get an obviousness ruling without going through a full jury trial.

          1. 5.3.1.3.1

            With respect, I’d assume that Martin is a patent prosecutor with little familiarity of litigation

            Not even close LR.

            Marty is a disgruntled businessman who was taken to task by someone with a patent and “settled” the case with a ‘gag order’ (on his part).

            He knows next to nothing at all about substantive patent law.

            Sadly, the fact that you think him to be a prosecutor raises some serious questions about YOUR patent knowledge. You may well understand the “litigation” side of the fence, but the real action in protecting innovation is on the prosecution side.

          2. 5.3.1.3.2

            Oh dear, I did not mean to provoke a let’s-dunk-on-Martin.

            Martin is a regular around here and not a lawyer at all—prosecutor or litigator. Meanwhile, despite the fact that I said “asking” in my 5.3.1, I did not mean to imply that Martin was really seeking info. As Martin makes clear in his 5.3.1.2, he knows why litigators move for dismissal on §101 grounds instead of §103 grounds.

            I rather regret putting words in Martin’s mouth now. Really, he is just pointing out what I consider a fairly unassailable point—much of what gets done in the name of §101 really should be raised under §103, if one were simply to read the statute and apply it as phrased.

            The claim in question for this thread, for example, as Martin points out in 5—in a sane world this claim would be held eligible, but unpatentable because of obviousness. Clearly Martin understands why the claim got tanked under §101 (and why the Supreme Court has bent the §101 analysis out of all recognition to make that outcome possible).

            I think that it would be nice if the law were not so badly bent out of conformity to the statute. I am not sure whether Martin (whose natural sympathies seem much more inclined to the defendant’s than are my own) would agree with that. I certainly agree, however, with his observation that really what is going on here is an obviousness issue tarted up to sneak in on a §101-ticket instead of the §103-ticket that it should carry.

            1. 5.3.1.3.2.1

              That’s well stated Greg, although I don’t have particular sympathy for infringers of reasonable claims. I support the patent system and by and large I think it’s important to sound economic functioning. I think 101 has been bent out of shape because the policy demand to find a way to mitigate massive injustice was simply imperative, and without a well functioning congress, a political answer is unlikely.

              From my outsiders view, I looked at the plain & ordinary meaning of “abstract” and its latin root, and it’s clear that the most complete definition of abstract is a human mind drawing meaning from information. That such a region happens to be a constitutional no-go zone draws the line for me as to what kinds of inventions should be eligible or not.

              The problem of inadequate, abstract claims is a different one- where abstraction has a more specific meaning in the patent context. That meaning of abstraction reflects a situation where the words of the claim do not describe an invention- either because the inventor does not possess the invention, or does not sufficiently teach it, or because it is a variety of obviousness where the elements of a combination all do what they are expected to do to, creating more of a variation than a differentiation, or all of the above. The Alice test could be a useful heuristic “quick test” in a fairly adversarial and papered procedure like an expanded Markman phase.

              Lode is of course dead right about the absurd cost of a 103 invalidation. That disproportion is why 101 has been bent into a Mobius strip.

              1. 5.3.1.3.2.1.1

                although I don’t have particular sympathy for infringers of reasonable claims.

                Whose view of “reasonableness” of course colors (and overcomes) any of Marty’s views on the objective law as written by Congress.

          3. 5.3.1.3.3

            “It is exceedingly difficult and costly to succeed on a 103 challenge in district court, no matter how dumb the patent might be”

            Isn’t this a problem in its own right? Why do prosecutors act like Alice came from the void to disturb a perfectly just patent landscape? The CAFC’s absurd standards for 103 and the Office all-but washing its hands of 112 created a landscape which invited Alice.

            1. 5.3.1.3.3.1

              Isn’t this a problem in its own right?

              The Ends do not justify the Means.

              Why does this simple — and critical — point escape your understanding, Ben?

              1. 5.3.1.3.3.1.1

                Why do the ends not justify the means? Sometimes they do. In this example, they surely do. Hundreds of cr ap patents invalidated at the cost of a few worthy ones going down.

                Oh I know. Better that 10 infringers suffer horribly lest one patentee go unrewarded. That’s the “means” that you prefer to get to the ends YOU like.

                1. Why do the ends not justify the means? Sometimes they do.

                  I take it that you must be replying to anon, because vacuous slogans like “the ends do not justify the means” are his favorite mechanism for avoiding a point that he cannot rebut. This is, however, a really excellent point.

                  Why do the ends not justify the means. Someone making that argument actually needs to make the argument. The inadequacy of the ends to justify the means is not a self-evident truth. One must actually establish as much if one hopes to hold that ground.

                2. See Sir Thomas More (and most any primer on the Rule of Law) as to why — especially in law — we as a society do NOT abide by a “Ends justify the Means” mentality.

                  And if any attorney thinks this to be vacuous, that attorney has no business being an attorney.

            2. 5.3.1.3.3.2

              Isn’t [the exceeding difficulty and cost to succeed on a 103 challenge in district court] a problem in its own right? Why do prosecutors act like Alice came from the void to disturb a perfectly just patent landscape? The CAFC’s absurd standards for 103…

              I just deny the premise that that the CAFC’s standards for obviousness were ever “absurd.” The CAFC was consistently and more-accurately-than-not giving effect to the statutory and common-law (as in, common to the entire common-law world’s) standards for obviousness for decades, until the Supreme Court stepped in and totally bollocks up the law in 2007. If it was previously difficult to succeed on an obviousness challenge, that was because it should be difficult to succeed on an obviousness challenge. As the Canadian Federal Court of Appeal once put it (Beloit Canada Ltd. v. Valmet Oy, (1986) 8 C.P.R. (3d) 289) “The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination… The question to be asked is whether this mythical creature… would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy,” (emphasis added).

              [T]he Office all-but washing its hands of 112 created a landscape which invited Alice.

              I note that most of the post-Alice invalidations that we have seen have come in the computer arts, and it is in the computer arts that I see the complaint voiced that the Office has largely ignored enablement/written description/definiteness. Over in my end of the world, I can assure you that no one forgot about §112, which is perhaps why we have had less trouble post-Mayo (although, more than we deserve, in my opinion).

              In any event, I agree that ignoring §112 is a bad idea. To the extent that it was ignored, the solution should have been to police it more rigorously, rather than to bend §101 out of shape to compensate.

              1. 5.3.1.3.3.2.1

                The difficulty for a defendant winning on 103 well
                before trial in litigation is primarily due to the ease in avoiding summary judgement on 103 simply by effectively arguing that there are “disputed facts” on that issue, even if one has a D.C. judge otherwise willing to even seriously consider a 103 S.J. motion at that point.

              2. 5.3.1.3.3.2.2

                That is ridiculous and an embarrassment to our Northern neighbors — PHOSITA has “no scintilla of inventiveness or imagination” and must “come directly and without difficulty” to the claimed invention? Why would we care whether a claimed invention would be obvious to such a “mythical creature” when we have plenty of people skilled in the art who have more than a scintilla of imagination and would not give up merely if their pencil lead (graphite, I know) broke?

                Worse, this “test” is what many juries in the US apply, which is why it is so difficult to invalidate claims for obviousness when a patent with its pretty ribbon and gold seal is shown to the jury. (Except after patent 10,000,000, when they no longer have ribbons.)

                1. Cur,

                  I missed this post of yours from earlier — but you seem to merely want a different standard of PHOSITA than the one put in place (and want a “real person” standard with that real person having more than a scintilla of imagination).

                  The problem though is what you want is NOT the legal test of obviousness.

                  Sure, what you want may make real world sense to you, but that is only you operating to your own sense, and untethered to the legal rules in place.

                  To such, your question of “why would we care?” SHOULD be self-evident: we care because the Rule of Law is not the “Rule as to How Curmudgeon Feels.”

              3. 5.3.1.3.3.2.3

                Greg: I note that most of the post-Alice invalidations that we have seen have come in the computer arts

                If I can influence your thinking on this Greg, maybe it would be to ask you to find the role of information across all of the arts exposed to Alice. Almost invariably, the methods involved come down to some item of information- from stock trade to a “there is gold in them thar hills” medical diagnostic correlation. Reasonably, if MM’s objective physical structure is not apparent, the utility will almost be bound to an item of information that the method produces or requires as a predicate.

                How the patent system responds to new, useful and non-obvious information is the crux of the matter. it’s a political and philosophical problem, as we can see by the reams and reams of philosophy involved in these discussions- and not just online, but up and down the chain, to the Supreme Court and CAFC to bottom fee ders like us.

                1. Reasonably, if MM’s objective physical structure is not apparent,

                  You do realize the fallacy with Malcolm’s “objective physical structure” mantra, eh?

                  I sincerely hope that you grasp enough patent law to see at least that (and if you do not, then I invite you to sit down with your patent counsel and have them explain it to you).

          4. 5.3.1.3.4

            Re: “The reason you’re seeing so many 101 challenges is because the differences between 101 and 103 in district court, in terms of cost, likelihood of success, etc., are night and day. It is exceedingly difficult and costly to succeed on a 103 challenge in district court, no matter how {invalid} the patent might be, and it’s almost unheard of to get an obviousness ruling without going through a full jury trial” [and appeal].
            Yes, as has been pointed out many times. [Also, a motivation for reexaminations and IPRs.]
            Naturally this is highly objectionable to all those who were previously collecting large amounts money suing on invalid patents and counting on the fact that the vast majority of defendants would pay to avoid millions in legal expenses for a full blown trial on that AND every other litigation issue. Also it has been upsetting to some here who were under the never-true miss-impression that a brief PTO application examination is or should be the only validity test of patent claims.
            [Of course most new litigation defenses need improvements with experiences, and some have already occured. It has no direct connection to the issues of erroneous PTO examiner 101 rejections instead of 103 or 112 rejections.]

      2. 5.3.2

        Dude – Clap on, clap off, the clapper. It would have been obvious at the time of the invention to “modify” the clapper by plugging in a car charger because the commercial says you can plug anything you want to turn on and off by clapping into the clapper. Further, it would have been obvious to replace the sound of clapping hands with a signal from a cell phone relayed through the internet because: money transaction and internet of things.

        Can I haz two points now?

      3. 5.3.3

        because the obviousness analysis is subject to a max number of references rule.

        ??? really? since when?

    4. 5.4

      and it does not much matter which,

      It matters very much which — any “picking up otherwise” is a serious mistake.

  2. 4

    Our entitled whining self-interested commenters like Greg should take a breath and recognize the public side of the coin which is that without Mayo and Alice we’d be living in a world where, e.g., corporations and rich grifters would be claiming ownership of millions of useful correlations and other abstractions. And we’d all be paying for it. Maybe not a problem for a tenured professor or a patent attorney (until the correlations relate to legal work) but definitely a huge problem for everyone else.

    These actually aren’t very difficult decisions to understand or apply. The CAFC’s “mess” is the result of the CAFC desperately trying to maintain its indefensible position on the eligibility of “new” (LOL) logic.

    1. 4.1

      I guess ChargePoints non-abstract “tech” patents (note: these claims aren’t “tech” anywhere in the world except in Silly Con Bro Land) are mostly worthless? Otherwise why bother with this j-u-n-k? If I was an investor, I’d be alarmed by the money wasting here.

      Next up: ChargePoints will assert its super awesome patent on “charge authorization” protocols. They use CODES, my friends! In the car charging context! Can you imagine? It was a very unconventional idea, you see. Sure it was.

  3. 3

    Carter Phillips should use his fantastic brain to realize the fact that the Supreme Court isn’t responsible for the 10,000% increase in “do it on the Internet” j-u-n-k patents that should never have been granted in the first place, much less filed.

    Also, last time I checked, the PTO was granting historic numbers of patents. More patents have granted in the last five years following Alice than in any other five year period in history. So it’s a tad misleading, shall we say, to run around screeching about “nothing being patentable anymore.” Is it more difficult now to get or enforce a junky “do it on a network” patent? You bet it is. And that’s a great thing for everybody, unless you are a desperate patent attorney or a low level (fake) “innovator” who needs to find a new grift.

    Lastly, let’s all pause and acknowledge that Carter and his clients are basically frauds. They didn’t invent a “new way” of controlling a single f—-ing thing. And they know it.

    1. 3.1

      “Derp but my Internet communicates with a derp charging station derp!”

      Pretty much sums up the great Carter Phillips’ position here. What a c-e-s-s-p-o-o-l.

      Take the money and run, I guess. This isn’t going anywhere.

  4. 2

    Simple as:

    1. Hear no evil.

    2. See no evil.

    3. Speak no evil.

    4. Cert denied.

    Congress: Where are you?

    Where? Are? You?

    1. 2.1

      In the SCIF, last I heard.

  5. 1

    The petition calls-out Alice as a “failed experiment” especially when placed “in the Federal Circuit’s hands.”

    Yeah, pretty much. I am not especially hopefull about the Court fixing the mess of its own making, but that is what Mayo/Alice is—a mess. Senators Tillis and Coons, we look to you for the clean-up work.

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