Conventionality is Irrelevant to Alice Step 1

by Dennis Crouch

iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision)

The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid.

Here, the claims are directed a safety-feature for systems that evaluate body-movement, such as Nintendo’s Wii Sports and Mario Kart 8.  The basic idea is that the system will sense acceleration of a body and determine whether the associated movement is “is within environmental tolerance.”  A “tolerance indicia” is then created and transmitted.  The patent notes that movements beyond tolerance might “be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.”

Eligibility: Pre-trial, Nintendo had also argued that the asserted claims were invalid as directed to the abstract idea of gathering and processing data.  The district court refused to decide that issue pre-trial.  However, after the trial, the court stepped-up and found the claims invalid.  That decision eliminated the damages award.  On appeal here, the Federal Circuit has affirmed.

[ILife’s] claim 1 of the ’796 patent is not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors. It merely recites a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.

Slip. Op.

The patent itself includes more specific hardware and logical elements.  Consider, for instance Figures 1 and 5 below.  However, the asserted claims here were directed to a much broader abstraction.

As the district court held, the elements of claim 1, considered individually and as an ordered combination, fail to recite an inventive concept. Aside from the abstract idea, the claim recites only generic computer components, including a sensor, a processor, and a communication device. The specification’s description of
these elements confirms they are generic.

Id.

= = = =

Separating Out the Steps: The one quirk of this decision comes from the following statement: “The conventionality of the claim elements is only considered at step two” of the Alice/Mayo analysis.  In finding the claims directed to an abstract idea, the district court had noted that claim 1 does not require “anything other than conventional sensors and processors performing conventional activities previously known to the industry.”  It was error to consider conventionality at that stage of the analysis.  Despite that error, the appellate panel still found the claim directed toward an abstract idea.  Note that this is a non-precedential decision and so this line from the case won’t help yours.

= = = =

1. A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising:

a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and

a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance

wherein said processor generates tolerance indicia in response to said determination; and

wherein said communication device transmits said tolerance indicia.

= = = = =

Michael Wilson (Munck Wilson Mandala) represented the patentee at trial and on appeal; Stephen Smith (Cooley) for the successful defendant.

49 thoughts on “Conventionality is Irrelevant to Alice Step 1

  1. 10

    Randomguy >>>This is a perfect example of why Alice is needed. It’s unquestionable that when you have a functionally-defined result (“determine whether said body movement is within environmental tolerance”) that is not further limited by specific means, you don’t possess the full range of that scope. The claim on its face covers every way of doing something, which means one must possess knowledge of every relevant element and their relationships to each other. Given the inductive nature of science you can almost never make that finding.

    This typifies the opinion taken by most of the CAFC and the Scotus and is —of course–complete nonsense.

    Again and again, it ignores the person of ordinary skill in the art and what was invented. One should not have to put the means in for something that is known in the art and scope of the terms is interpreted in view of the specification and what one skilled in the relevant art would know. And it would be impossible to include every way to solve many problems.

    1. 10.1

      There are a multitude of such “no patents for anyone” types of natural consequences that come from this and other views expressed by Random.

      Another is the “predictable” type that would eviscerate patents except in two very specific areas (and both areas need not have any patent system for promotion).

      The first specific area is pure serendipity. The “no-way-anyone-could-ever-predict” area. It should be plainly obvious why this aligns with a “no-patent-system-at-all” view as why would anyone ever need a patent system for further innovation of innovation were but for “oops”…?

      The second specific area (and one that those who do not recognize history are bound to repeat) is the genius level innovation, or better known as Flash of Genius. This is the view (expressly repudiated by Congress) that patents are only for “really special” things that have a Flash of Genius. The problem (of course) is that having a patent system to promote does not make any sense because those that are Genius do not need a patent system.

      Given that both of the outcomes of the views of Random cannot stand, it is easy to see that Random’s views cannot stand.

  2. 9

    Is this is the place where I give prosecutors enough rope to hang themselves by reminding them that per MPEP 2106(b) and (d), a practical application is tested under Alice Step 1 (Step 2A of the office procedure) and therefore isn’t subject to conventionality concerns? So long as a specification reinvents the wheel in detail, a smart prosecutor can always get a computer-implemented invention found eligible.

    1. 9.1

      … and how is that rope?

      You do realize that AN item of conventionality is not sufficient to doom a claim under the part of the law that deals with prior art right?

      I wonder if you also realize the difference between conventional and either of the prior art standards covered under 35 USC 102 and 35 USC 103.

      You do know there is a difference, right?

      1. 9.1.1

        I’m simply stating that the way the office drafts the test, one could write a specification that would get any claims, like the claims above or the claims in Boom, found eligible *by the office.* It’s unquestionably true that not every claim is found eligible by the courts.

        This is that rope.

        1. 9.1.1.1

          That does not make sense as far as the idiom of rope.

          Maybe try something else…

        2. 9.1.1.2

          Plus (in case you haven’t been following along), what is and what is not found eligible by the courts has been turned into a Gordian Knot of contradictions.

          And that is not just my view, but the view of leaders in every branch of the government (including your boss Dir. Iancu).

  3. 8

    Even if “abstract” allegations were Constitutional (and they’re not), both iLife and Boom’s claims are patent eligible.

    But as long as so many of the CAFC judges clench bull-dog tightly the Alice bone in their teeth, innovative small companies and independent inventors of internet / computer / diagnostic invention don’t stand a chance.

    This is most assuredly NOT what our Founding Fathers intended.

    SCOTUS and the CAFC have run amok; plain and simple

    Congress: Where. Are. You?

    1. 8.1

      Pickin’ peaches.

  4. 7

    Captain Kangaroo would be so pleased.

  5. 6

    It’s a pity there’s so little information about the 112(a) arguments.

    1. 6.1

      The following comes from the court’s pretrial order that summarizes the defendant’s 112 arguments: Defendant's 112 argument

      1. 6.1.1

        Thanks.

      2. 6.1.2

        This is a perfect example of why Alice is needed. It’s unquestionable that when you have a functionally-defined result (“determine whether said body movement is within environmental tolerance”) that is not further limited by specific means, you don’t possess the full range of that scope. The claim on its face covers every way of doing something, which means one must possess knowledge of every relevant element and their relationships to each other. Given the inductive nature of science you can almost never make that finding.

        The scope of this claim, if it were to be believed, means we could shut down all research into impact analysis and kinesthesiology, because we already possess the full range of knowledge that allows us to determine if body movement is within environmental tolerance for any body in any environment. That obviously isn’t the case, because I still see videos where cars smash into walls to measure the crash test dummies. Moreover, THIS document doesn’t advance the art at all, and actively admits that tolerance is a shifting standard (“For instance, ‘tolerance’ would likely be very different for a monitored body of an elderly person with a heart condition, a toddler, a box in a freight car, a container of combustible gas, etc.”).

        This isn’t something that should really be subject to the confusion of a jury or even any real factfinding attempt. The four corners of the document speak for themselves. That’s why, using essentially written-description language, the Supreme Court struck down Morse’s patent based on the threat of future overbreadth rather than on proof of it, and why Alice-based backstops are going to continue to be necessary until Written Description gets handled in a not-ridiculous fashion.

        You know this patent is invalid the moment you pick it up, because the claim requires knowledge that would be absolutely revolutionary to support its entire scope and the first Google result for Michael Lehrman is a Chicago attorney and not a nobel prize winner for solving kinesthesiology. To not-quote Mark Zuckerberg (or perhaps to quote Aaron Sorkin) – “You know you really don’t need a forensics team to get to the bottom of this. If you guys were the inventors of Facebook, you’d have invented Facebook.”

        I guess kudos to the judge for letting the common man get it wrong first and then doing the right thing, but it would have been less work for everyone if he’d just have put it to bed before the case started.

        1. 6.1.2.1

          “..The claim on its face covers every way of doing something…”
          If so, that is what the Supremes call “preemption” and it is also a 112 issue. But we have inventors who think that is what they should be entitled to.

          1. 6.1.2.1.1

            “..The claim on its face covers every way of doing something…”
            If so, that is what the Supremes call “preemption” and it is also a 112 issue. But we have inventors who think that is what they should be entitled to.

            That’s my point. (Well, not so much “what the inventors think they are entitled to” – as that is a function of bad legal advice – but more a problem of what juries will uphold based on the current 112a tests.) If the 112a tests were working in this case, the jury would have dealt with it under 112 rather than the judge having to step in on 101. In fact, ideally in this fact pattern the case should have been disposable under 112a at the pleadings stage.

            When the specification of an evaluation invention admits that context is relevant in how you evaluate, and then doesn’t disclose how it would evaluate in a given context (here video games), the claim is unquestionably both overbroad (under 112a) and abstract (under 101). That’s just admitting that you don’t possess a concrete application to at least part of your claim scope. If you had some case law that would let that be taken care of at the pleadings stage under 112 you wouldn’t have needed 101 here. The Supreme Court *actually conveyed* that reasoning, it’s just never been adopted as part of written description.

          2. 6.1.2.1.2

            “But we have inventors who think that is what they should be entitled to.”

            I doubt many tabla rasa inventors convince themselves that their invention is the result. It seems much more likely that a certain class of professionals with financial incentives for inventors to believe in an expansive scope of invention convince the inventors along the way.

            1. 6.1.2.1.2.1

              This is the type of baseless accusation that should not be tolerated.

              (And by not tolerated, I do NOT mean censored – I DO mean that immediate pushback should be made)

              Ben, while there is no doubt some bad apples (as there are in ANY profession), you ignore the fact that attorneys operate under a strict code that makes your statement into a falsehood. I “get” that you may >feel otherwise, but you would do well to understand why you say what you say is simply not correct.

        2. 6.1.2.2

          You confuse and conflate (and get BOTH wrong) 101 and 112, and want to apply a “whatever” that very much is a major part of the problem.

          Wake up already.

          1. 6.1.2.2.1

            Wake up already.

            Scoreboard

            1. 6.1.2.2.1.1

              Thank you for proving my point, Random.

              The scoreboard is broken, and THAT is the larger issue.

        3. 6.1.2.3

          “This is a perfect example of why Alice is needed.”

          A different 112(a) could handle it.

          I’d just like to find out why our current 112(a) won’t handle it first. What makes juries so resistant to 112(a)-WD arguments?

          1. 6.1.2.3.1

            “..why our current 112(a) won’t handle it first.”
            Because the Supremes said 101 is a threshold question.
            “What makes juries so resistant to 112(a)-WD arguments?”
            Because 112 is a technical and factual patent law issue that is hard for juries [and even many judges] to understand.
            [But isn’t a better question why are so many examiners resistant to 112 rejections?]

            1. 6.1.2.3.1.1

              Maybe it’s that certain class of professionals with financial incentives for inventors to believe in an expansive scope of invention convince the inventors along the way…

            2. 6.1.2.3.1.2

              “Because the Supremes said 101 is a threshold question.”

              I meant I would like to know the answer to that question first, before thinking about what a different 112(a) would look like. I was definitely unclear there, sorry.

              “[But isn’t a better question why are so many examiners resistant to 112 rejections?]”

              The answer to that is well known: PTO management discourages 112 rejections.

              1. 6.1.2.3.1.2.1

                The answer to that is well known: PTO management discourages 112 rejections.

                Do your Fn job.

                “PTO management” not “letting” you do your job?

                (doubtful) – but even if for argument’s sake that were so, YOU HAVE A UNION. Use it.

                Do NOT be a lazy whiny SOB and pass off your problems as if you cannot do anything about it, and then turn around and blame others.

                1. This inane refrain of yours is not even applicable here.

                  It is not my problem as an employee that the PTO discourages its employees in this way.

                2. 1) it is not inane.
                  2) it very much is applicable here.

                  You ARE blaming others for conditions at the office that YOU do not like.

                  If you have problems with YOUR job, take those problems to your union and have them do something about it.

                  In the meantime, do your Fn job.

                3. Unionized burger cook: “People should know that my employer expects employees to follow a process which results in undercooked burgers.”

                  anon: “Drr! Stop complaining about working conditions! Have your union fix the problem!”

                  Congrats anon. You’ve truly beclowned yourself yet again.

  6. 5

    This is just a question re the handing of the 101 Alice abstraction issue below? Was there no 12(b)(6 ) motion? This Fed. Cir. decision says the 101 issue was raised by a summary judgment motion which the NDTX judge refused to rule on before trial and only took up and granted in a JMOL post-trial. [Which the Fed. Cir. then sustained here]. {Wasting a lot of the judges own time, not to mention all the trial cost burdens on the parties}

  7. 4

    [T]his is a non-precedential decision and so this line from the case won’t help yours.

    Not all citations to authority need to be citations to controlling authority. Persuasive authority can also help win a case.

  8. 3

    Despite that error, the appellate panel still found the claim directed toward an abstract idea. Note that this is a non-precedential decision and so this line from the case won’t help yours.

    Yes and no.

    Yes, an immediate citation would have been nice. No, lack of one does not mean that this citation cannot help you.

    The nature of being non-precedential may include the fact that such a tidbit does not change the law.

    In other words, the statement merely reflects the law as previously established, and serves merely to be applying that point of law.

  9. 2

    MaxDrei might be interested in the other §101 case decided today, Boom! Payments v. Stripe Inc. The CAFC opined (slip op. at 8) that Boom relies on the use of the buyer identifier… to distinguish its system from conventional escrow. But use of an identification code… cannot be said to be a ‘technological’ solution that improves the functioning of a computer system.” In other words, the §101 eligibility was negated explicitly on the basis that the claimed solution was not “technological.” Baby steps toward harmonization with the EPO approach to subject matter eligibility.

    1. 2.1

      Not sure about that, Greg. At the EPO, eligibility is a question whether the claimed subject matter exhibits “technical character”. A digital computer has it but a pure business method does not. There is zero enquiry into the question what sort of “solution” is provided by the claimed matter.

      Thus, at the EPO, a claim to, for example, “A digital computer (period).” is 100% eligible. This BTW explains why the judges in England condemn the EPO approach to eligibility as intellectually dishonest.

      At the EPO, the filtering takes place much later, during the obviousness enquiry. There , to prevail, you need to claim a non-obvious technical solution to an objective technical problem. Usually, that’s the hard bit.

      1. 2.1.1

        How is ‘technical” defined?

        Oh wait, it is not so defined, now is it? (leastwise in a non-circular manner, eh?)

        1. 2.1.1.1

          There is a good reason why courts shrink from handing down a definition of such basic words as the “technology” of GATT-TRIPS or the “invention” or “obvious” word of every patent statute. None of us can see over the horizon as we proceed along the road of advancing technology. I recall the term “judicial economy”. That also has something to do with it. And then there’s the inadvisability, when you are a judge, of sticking your neck out further than is wise or necessary.

          But don’t worry your head over it, anon. With more than a thousand Decisions a year by the Appeal Boards of the EPO, in each of the last few decades, as to what is “technical” and what is not, the boundary is increasingly precisely triangulated. Those who follow the EPO case law and then advise their clients what the EPO sees as “technical”, do so with ever-increasing certainty.

          1. 2.1.1.1.1

            Triangulation? Without binding authority?

            No.

            You have never understood the concept.

      2. 2.1.2

        Thanks for the clarification, Max.

  10. 1

    Re: “The patent notes that movements beyond tolerance might “be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.”

    If “ILife Technology” is a real company with real such products, I can only imagine what their general counsel’s reaction would be to seeing this admission against interest by their patent attorney being used against them in personal injury lawsuits, as as has occurred in some prior cases.

    1. 1.1

      I bet most anyone can accurately guess the answer to that “if” question, but just in case, Google and LinkedIn pretty much confirm that it’s a resounding “no” on both counts—not a real company, let alone one with real products.

      Per the aforementioned sources, iLife’s physical presence appears limited to a lone suite in an office building in the middle of the DFW suburbs (covered by NDTX). Its org chart, so to speak, contains the sum total of a single employee, who—surprise surprise—is also the CEO and first named inventor on the patent.

      1. 1.1.1

        Then that’s a plus then, right?

        Seeing as it is (or should be) well-known that patents have the nature of a negative right, and NO ‘real product’ is required, eh?

        Unless you have an infringer’s view of patents…

        1. 1.1.1.1

          Well, from a general perspective—i.e., apart from the discrete issue Paul Morgan raises—then yes, I agree it’s a plus, at least for patentees. As you point out, it eliminates one potential formality (proof of being a “real” company) that would have to be satisfied prior to filing suit. Of course, as most everyone here knows, that’s not quite true in the ITC, because it does have a domestic industry requirement.

          There are other benefits too, such as no risk to product lines or revenue from counterclaims, and being outside the scope of the marking requirement (at least if a patent’s not licensed to anyone yet).

          But getting back to Paul’s point, he’s clearly been hardreading the patent and it definitely seems like an important issue for “real” companies to watch out for. I would hope or assume that such companies are more careful in their patent drafting than iLife, but Paul seems well-versed in these matters, so he might know of some real-world (no pun!) examples where that wasn’t the case.

          1. 1.1.1.1.1

            Yes, being a shell corporation with no products or assets other than an assigned patent and litigation funding has significant advantages, including lack of counter-claims, limited discovery, etc. Which is part of why such companies are so commonly plaintiffs in patent suits. But this case is more unusual if one of the patent’s inventors is a principal.

            1. 1.1.1.1.1.1

              The notion that you may be reaching for is NOT “shell” company.

              That implies a falsity (as in ‘shell game’).

              What you may be looking for is the denigration “Patent Tr011” — which was widely propagandized by Efficient Infringers as a boogeyman (and NOT to anyone’s benefit but themselves).

              Oh, they were good at the story telling – and a captured academia was only too happy to help (even if for different philosophical reasons).

          2. 1.1.1.1.2

            You are aware that domestic industry can be (merely) licensing, right?

            1. 1.1.1.1.2.1

              Yup, I’m well aware, thanks! Although I’m not sure I agree 100% with the “(merely)” part.

              That does no violence to my point either (which by now is like a tangent of a tangent [is that a pun?] of Paul’s original point). For one, it doesn’t change the fact that DI is an additional requirement that lacks a parallel in district court proceedings. And even though DI can sometimes be met with licensing, you still have to satisfy both the economic and technical prongs, which I wouldn’t say is a trivial undertaking. That’s why I can’t quite get on board with “(merely)”.

              1. 1.1.1.1.2.1.1

                Of licensing is accepted (as you concur), then licensing meets both prongs, and “(merely)” is entirely appropriate.

                And yes, tangent of a tangent is where we are at — as often happens in comment threads (and perhaps why the numbering of comments is provided).

              2. 1.1.1.1.2.1.2

                Comment caught in count filter…

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