by Dennis Crouch
In its October 2020 decision in EcoServices v. Certified Aviation, the Federal Circuit issued a somewhat muddled nonprecedential opinion. The en banc petition has now been briefed and awaiting action from the court.
The patents at issue cover methods and systems for washing a jet engine. A jury sided with the patentee and the district court awarded $2 million in back-damages, and $400 per infringing wash in ongoing royalties.
[Federal Circuit Decision] On appeal, the Federal Circuit affirmed on validity — rejecting the defendant’s eligibility and obviousness argument — as well as infringement. The appellate court did find problems with the ongoing royalty (as well as the award of supplemental damages for ongoing infringement during the course of the lawsuit). However, the appellate found problem’s with the ongoing royalty because one of the two-infringed patents has now expired. “Here, the record does not support that a later jury would have calculated a royalty of $400 per wash as a royalty award for infringement of the ’262 patent alone.” The majority opinion was penned by Judge Schall and joined by Judge O’Malley. Judge Dyk wrote in dissent — arguing that the claims should be deemed invalid as directed toward an unpatentable abstract idea.
The defendant subsequently petitioned for en banc rehearing on eligibility grounds, asking “whether the bare idea of automating a known, manual process using a generic machine is a patent-eligible invention.” Here is claim 1 of Certified Aviation’s US9162262.
1. A system for washing turbine engines comprising:
a washing unit for providing a washing liquid to the turbine engines;
an information detector configured to gather information related to engine type; and
a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used.
Reading this claim, you can see that it includes three elements: a “washing unit” that delivers soapy-water to the turbine; an “information detector” such as an RFID or Bar Code reader; and a “control unit.” The information detector detects the engine type and then the control unit runs a particular “washing program.”
The improvement here is the automation of the of the washing-process by automatically detecting the engine-type and then selecting parameters depending upon the engine type. But, the particular detection scheme was a very well known approach (RFID or Bar Codes); and the particular wash parameters for any given turbine are not specified in the patent document. The patent explains that this type of activity was already being done in the field — but was using humans to identify/select rather than an automaton. This had the added benefit of “completely eliminating subjectivity” and thus avoiding user-error in the wash approach. (Quoting the inventor’s testimony at trial). Before this invention, the “human operator would consult a card for the type of engine to be washed, and [manually] enter the established flow parameters for the engine type.” Quoting Judge Dyk’s dissent.
In his dissent, Judge Dyk cites prior precedent to the point that “mere automation of manual processes using generic computer components” is an abstract idea, even if the automation provides substantial advantages. The majority disagreed and found instead that the claims “are directed to an improved system for washing jet engines and not to an abstract idea.”
In other words, the claims … do not recite the mere desired result of automated jet engine washing, but rather, recite a specific solution for accomplishing that goal.
Slip Op. The court released its decision as non-precedential. That means that its outcome will have little impact on the overall jurisprudence of this area, it also means that the decision was not (likely) distributed to the other Federal Circuit judges prior to release.
The en banc petition largely follows Judge Dyk’s dissent, but offers an interesting bit of analysis regarding the point-of-novelty link to eligibility.
This Court has held that the eligibility inquiry begins by “understand[ing] the problem facing the inventor and, ultimately, what the patent describes as the invention.” ChargePoint. This point-of-novelty inquiry guards against drafting efforts to patent abstract ideas by hiding them among prior art or otherwise insignificant elements.
Here, the defendant argues is that the point of novelty is the automation, and automation is an abstract idea. The Federal Circuit asked for a response from the patentee, and that has now been filed as well.
Question for the comments on preemption: Could you automate the prior washing process without infringing claim 1?
“Could you automate the prior washing process without infringing claim 1? ”
What about having the control unit not getting the information related to engine type from the information detector but from another source? Maybe encrypt/decrypt it for more security or compress it for less data traffic.
What about splitting up the control unit into dertermining a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs? And having a regulator unit configured to regulate the washing unit according to washing parameters associated with the washing program used?
“What about having the control unit not getting the information related to engine type from the information detector but from another source?”
Good luck figuring out the scope of “information detector” so that you can pick a source that doesn’t count as an information detector.
It looks like the U.S. is adopting the problem-solution approach that Canada just disapproved of last year in Choueifaty.
Really, Paul? I see no sign of that. Where are you looking?
And incidentally, which particular problem-solution approach did Canada recently set aside? It is my experience that few people who disparage the EPO approach have any real grasp of it at all.
“an “information detector” such as an RFID or Bar Code reader”
Dennis’ interpretation of the “information detector ” is far too narrow here.
The CAFC agreed with EcoServices and the DJ that “information detector” includes… a keypad.
This was apparently critical because the “infringing” system did not read an RFID or a barcode from the engine. The infringing system instead had a keypad for the operator to input an engine identifier.
So, the prior art was a jet engine washing system where an operator inputs washing parameters and the system used those parameters to wash the engine.
And the claimed invention is a jet engine washing system where an operator inputs engine parameters and the system used those parameters to determine washing parameters used to wash the engine.
Aren’t you proud to be part of the patent system today?
That makes it even worse, for a variety of reason. Certainly “information detector” should trigger 112(f), and it appears the spec only discloses RFID tag, and not a keypad. (If, on the contrary, it doesnt trigger 112(F), then should fail for lack of written description/enablement since they disclose one information detector but claim scope covers any type of information detector).
Something happened here. Was there some type of assignor estoppel that stopped them from arguing 103/112? Or were the facts just really bad or something?
The 112 views are not in line with normal thinking.
You’ve been drinking far too much k00l-aid.
There are exactly zero patents that would be permitted with that philosophy of yours and it completely misreads the words, intent and reach of why the optional provision of 112(f) was provided for purely functional claiming (and completely misses on the Prof. Crouch coined term of Vast Middle Ground).
“Certainly “information detector” should trigger 112(f)”
While I think the examiner did an awful job here, I’d note that the notice of allowance went out only two weeks after Williamson. I don’t remember, but it seems unlikely that there was guidance released at that point.
“If, on the contrary, it doesnt trigger 112(F), then should fail for lack of written description/enablement since they disclose one information detector but claim scope covers any type of information detector”
From the few documents I could find regarding the trial, it appears that the defendant actually pressed a written description issue, but the jury disagreed.
“Something happened here. Was there some type of assignor estoppel that stopped them from arguing 103/112?”
They argued everything and lost in front of the jury. Perhaps what happened here is that we simply see that breaks in 103/112 that gave us the present day problem of 101.
“Perhaps what happened here is that we simply see that breaks in 103/112 that gave us the present day problem of 101.”
UGH.
More conflation.
C’mon Man, at least here on a patent blog, we ALL should be able to get basics correct and not make the simple mistakes of conflating (and confusing) different sections of law.
If “The CAFC agreed with EcoServices and the DJ that “information detector” includes… a keypad” for engine-type entry, and that is what the the record shows the accused infringer was doing, then why was this appeal not based heavily on that being an erroneous claim interpretation instead of 101?
The corollary question (which has been the subject of mountains of comments here): why is 101 so misused, abused and made into a mess of a Gordian Knot (starting with, but not only) by the Supreme Court?
There be animus afoot.
Much like (exactly like) what prompted a certain Supreme Court Justice to self-label the Court with the phrase: “The only valid patent is one that has not yet appeared before us.”
The funny thing about history – learn it or repeat it (or sadly, learn it and watch as others refuse to learn and thus repeat)
I don’t know how many pages the appellee devoted to the different issues, but the CAFC considered the claim construction as it’s own issue under section III of their opinion.
Perhaps, assuming they under-focused on claim construction, it was because they correctly understood patent law to be a grotesque horror where “information detector” could be read as “keypad” in this context without legal error?
“Question for the comments on preemption: Could you automate the prior washing process without infringing claim 1?”
Absolutely.
In fact, based solely on the claim element “an information detector configured to gather information related to engine type;” one can easily see a plethora of individually automated washing systems (dedicated per each type) that would not infringe claim 1.
That’s not automating the prior washing process.
“Before this invention, the “human operator would consult a card for the type of engine to be washed, and [manually] enter the established flow parameters for the engine type.””
A clothes washer with only one mode for washing clothes does not “automate” a process of a user selecting the correct washing mode for a set of clothes.
Ben, you absolutely missed the point.
The point was not “Does claim 1 automate the prior art washing system.”
The point was “Could you automate the prior washing process without infringing claim 1?”
The “pre-emption” angle simply swings on the fact that claim 1 does NOT pre-empt all different prior washing processes merely with automation.
As noted, claim 1 simply does not carry that notion of preemption.
I don’t know what you’re arguing against, but I’ll clarify my point for those capable of 9th grade reading comprehension.
“[A] plethora of individually automated washing systems (dedicated per each type)” does not demonstrate that the answer to “[c]ould you automate the prior washing process without infringing claim 1” is yes because such a set of machines does not “automate the prior washing process.”
Lol – way to double down with an attempted putdown while you are the one that is (still) wrong.
The only thing you clarified is that you don’t get it.
Of course Judge Dyk wants to knock it out under 101 – why do the heavy lifting of 103? Oh wait, the jury already did that. I guess J. Dyk knows better.
I’d say I’m counting the days until his retirement, but with the new administration, I’m not sure the replacement will be any better.
“Judge Dyk wrote in dissent — arguing that the claims should be deemed invalid as directed toward an unpatentable abstract idea.”
Simply shocking, I tells ya’ — simply shocking.
“Merely.” Anyone else come to really h a t e this word over the years?
So don’t infringe the patent by manually entering the washer codes. If it’s such a trivial “point of novelty” why would anyone need to do it? Would it have helped to include “connected to the control unit are a set of actuators to blend the cleaning mixture? and the 555 timer circuit? Plus width modulation to effect the blend?
At $400 per wash royalty good grief – this must be something rather expensive and important – what is the price of a wash? $10 grand per wash? That’s an imputed royalty of 4% @ $400 per wash.
Remanding because the damages were not set on a per patent basis? IMHE, most trial courts – will not allow a breakout of damages on a per patent or per claim basis. It’s 7th Amendment damages – black box – jury issue. And of course the damages statute- to compensate for infringement but NO LESS than a reasonable royalty. That is just “reaching in” by CAFC, but of course a ramification of eBay and the (unlawful) compulsory license jurisprudence that ensues. In other words, the market would have functioned (cleared) had the injunction entered. Stop the pearl clutching CAFC – the engines will still get washed.
Sure didn’t take long for the Alice 2 step to disintegrate to the “point of novelty” test – which is just another way of saying the gist or heart of the invention. Poor Fredrico and Rich must be turning over in their graves – this was specifically abolished in the ’52 Act. They specifically said they were overturning this 2nd circuit BS point of novelty BS. This is the worst SCOTUS in a century. Obviously, Dyke can’t make a run on 103 (although SCOTUS already trashed the 7th Amendment for patents), so he end runs the 7th with the ‘gist’ test under 101.
One of the joys I had in discussions with the late Ned Heller was bringing him to the brink of admitting that the Point of Novelty in Diehr was nothing more than software.
“So don’t infringe the patent by manually entering the washer codes.”
Actually, the scope of the claim was found to include manual entry. You’ll need to modify and resubmit your apologia.
Ok, if that’s the case – here we have another case of bad patent lawyers and enforcement counsel – not claiming the invention specifically and not picking a narrow claim to enforce – and poor draftsmanship – not having enough disclosure to enable a narrow – but valuable claim. But hey, PTO allowed it, so whatever. You get what you pay for.
“You get what you pay for.”
Yup.
Step 1. Demand low fees at the PTO.
Step 2. Receive poor examination from the PTO.
Step 3. Profit!
The PTO needs to go to being funded from the public coffers.
How in the world do you think that being funded from public coffers would change, let alone improve things?
Serious question.
“Serious question.”
Because I think the PTO needs to allocate significantly more time for examination (in addition to other changes), and I don’t think that will ever happen as long as as the significantly greater amount of funds need to come from applicants’ wallets.
On the other hand, I am hopeful that a combination of eliminating applicants’ fees and increasing examination funding is the sort of thing that could appeal to both of camps of the patent world, and as such could be politically feasible.
You do realize that “from wallet” is not as powerful a driver as you may be viewing it, right?
Are you familiar with the overall budgeting process for Office operations?
Also, there is nothing that stops your identified desire for a better “fee to cost approximation” from being implemented regardless of fee source.
On the (true) other hand, you are talking about ‘selling’ what is effectively a FULL multi Billion dollar cost from innovators to a general tax on the public. NO side of the aisle is going to go for that (not even “D” who are already planning massive tax hikes).
… plus (yet again) you make the mistake of thinking that Step 2 must follow Step 1.
Whether or not ‘low fees are demanded’ is quite distinct from examiners doing the job that they are supposed to do – under the law (and quite distinct from ANY metrics of the job that they are supposed to do.
Do NOT confuse the metrics of your job WITH your job. As I have put to you, like forever, doing your Fn job and not being able to meet ANY metrics that YOU (the Royal You, through your Union) agree to are distinct things.
Monkey, Dance !
(your meme is beyond dull)
link to patentlyo.com
Thanks ! $$$$. Again $$$ !
And we need more broken links !! $$$. Pulleeeze ! $$$
Lol – the link is not broken, check yourself.
(you’ve played that game already – it did not work then either)
And yet more of the monkey dance !!! [what a maroon]
Thanks ! $$$$
We are so happy that the link is not broken in your particular hardware and software platform! What browser are you using , BTW ? We know some people that can help.
But Thanks for your contribution !! Again ! $$$$
So you can ‘help?’
You’ve got this backwards (as usual), eh?
Nobody knows what it is you think you’re trying to say, Snowflake. But THANKS $$$more of the Monkey Dance, Pulleeeze !!
[what a maroon]
Is that “nobody” part of that “we?”
“Is that “nobody” part of that “we?”
You need to call 911 or whatever they might have in your country. You are having a stroke.
And now in your troubled mind you think you invented the dollar sign, Snowflake (aka Hall Monitor)? Do you happen to have the patent number handy?
See? You are projecting again. You messed up the different threads on which you are obsessing over me.
Oopsie.
We see. You admit you are not the inventor of the dollar sign.
Monkey, Dance !! More $$$$ thanks $$$
How long have you stopped beating your wife?
Your self?
Are you no longer ashamed of your g ay clown p0 rn habit?
Yes!! More ! Monkey Dance !!! Thanks $$$
No, thank you.
Thanks! Again $$$$
But more of them broken links ! Please $$$$
My how telling, a double dip of false presumption and stolen memes from you.
Mmmm, train-wrecky
Not bad. But you forgot to supply one of your broken links.
3.5
False presumption (yet again), as I do not supply broken links.
We both know that, and at this time, there is ONLY you and I here.
So it’s left to wonder, what possible point do you think that you are making?
I don’t understand. Is there a hidden broken link there?
More monkey dance !!! Thanks in advance $$$$
You could have stopped after your first three words.
My first three words were mama, dada, and [maroon], Snowflake.
And, Thanks $$$
But more broken links !! Please $$$$
Yay, evident falsehoods plus being obtuse.
Ooohhh, I feel one of your self-described train-wreck moments coming up!
You forgot a broken link but nobody’s perfect!! We forgive you because you are such a slave to the monkey dance!
[what a maroon; watch this]
Monkey, Dance !!!
False presumptions and projections…
If you want to watch something, watch the 0bsess10n factor of my pal Shifty, as well as how his choices keep on making bucks for me.
And he cant even do a broken link no more.
But watch this.
Monkey, Dance $$$
Why are you so enamored with a broken link?
Nobody does the broken links better.
But he does have one talent.
Monkey . . . Dance!!! $$
Enjoying your false premise?
I am enjoying your choice to post in a manner that makes me some bucks.
Shall we go for more?
Yes!!! Her majesty is still the queen of the broken links!!!
Watch this!!
Monkey, Dance! $$$
Woohoo! Another double.
Yay!
Thanks $$$
[what a maroon]
What is it that you are “thanking” for?
“In his dissent, Judge Dyk…
Ah yes, J. Dyk, of the “I don’t care what the patent discloses or claims, I’m gonna tell them what their invention is!” school of judging.
What a t00l.
Be that as it may, AA, it is a well-known fact, everywhere except at the Federal Circuit, since forever and aye, that “mere automation” fails to make the patentability cut.
The question here, as set up by Dennis, is whether the ambit of the claim in suit maps 1:1 onto the abstract idea of “mere automation”, whether or not it is one jot, tittle or iota more “specific” than that.
Is that “per se” or “as such”…?
(Talk about a loophole large enough to drive a semi through…)
anon – wha’s is the filter test for posting – i’m always in moderation.
Think George Carlin (for one of the filters).
This sometimes nabs words which inadvertently create a banned word across two words.
That list also is a bit odd, as words that would not make a real life GC list were added over time (especially when certain favored views were being devastatingly pilloried.
If you suspect a word, you might try that word in a “read down” mode, or one letter per row.
There are also count filters (but I do not think that you are asking about those).
And while not quite a filter, if one of your entry vehicles is a smartphone, and you have a tendency to “f a t F inger your entries (auto correct can both capture and sometimes mu tilate), you will want to take extra care with the email entry — that tends to be both non-forgiving and non-recoverable.
Isn’t “mere automation” is a 103 concept, not a 101 concept.
Yes of course. That’s what we (well some) are complaining about – the 101 is swallowing up 102 and 103 and 112 for that matter – the black hole – burn the straw man – ‘gist’ test is back. And add KSR – subjective (AKA hindsight) – reasoning for an extra kick in the bottom. Hint, no patent can survive the gist/KSR test. Because all these ‘tests’ at the end of the day …… ignore the CLAIMED invention – and do not require evidence to invalidate.