It Is Time to Fix the Courts’ Section 101 Tests on ‘Directed to …’ and ‘Abstract Ideas’—Whether in Chamberlain or Beyond (Part I)

The case of the “garage door opener,” The Chamberlain Group v. Techtronic Industries, Inc., has received its share of attention. Rightly so. The case, after all, spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed.

And it fairly asks, in a petition to the Supreme Court, that if a claim on a garage door opener is “directed to” an “abstract idea” and thus ineligible for patent protection—is any patent, or any technology, safe from the Mayo-Alice ineligibility test?

Chamberlain says no. From the outset, its petition declares that its case therefore presents a “patent emergency,” one that the Supreme Court must review to stop the Mayo-Alice test—and the Federal Circuit’s “directed-to” version of it—from expanding into, and negating, claims in every subject imaginable. “You name it,” they’ll get it, says the Petition before rattling off a number of product areas in which Section 101 has struck. But no matter who asks, the bottom line is this: If left undone, the test will continuously undermine the innovation and investment that the Patent Act is supposed to promote, not poison. U.S. Const., Art. I, § 8, cl. 8 (“Congress shall have power… to promote the progress of science … by securing for limited times to … inventors ….”).

We agree. The courts must review and repair the eligibility law and, in particular, the “directed to” step of the Mayo-Alice test and the definition (or lack thereof) for the judicially made “abstract idea” exception to Section 101. And if the Supreme Court doesn’t, the Federal Circuit should, and fast, assuming (of course) Article III standing and the rest. Litigators, we submit, should press the issue if the courts initially don’t.

This article first describes the Chamberlain garage-door patent, litigation, and history, as well as the Federal Circuit’s decision that held the garage-opener claims ineligible under the Mayo-Alice framework. More specifically, we focus on the Federal Circuit’s “focus-of-the-claimed-advance” definition in step one and how the courts have been applying it in Chamberlain and beyond. Thereafter we analyze the two erroneous aspects of the step-one “directed to” test: (1) the Federal Circuit’s erroneous definition of “directed to,” how it cannot stand in view of the Section 101 text and history and the Supreme Court’s Diehr precedent—and why the “directed essentially to …” standard, cited in Supreme Court precedent, should take its place; and (2) the Supreme Court’s need to finally define the judicially created exception for what constitutes an “abstract idea.”

Chamberlain’s Wireless Garage-Door Opener Invention and Trial Victories

The Chamberlain Group developed what it describes as a ground-breaking invention in the garage-door market. The case background has been widely reported. Chamberlain’s inventive garage opener purportedly changed the market for such products. While otherwise claiming a physical device with various physical features, the Chamberlain opener or “operator” device stood out because of its wireless-communication features and ability to conduct two-way communications with other devices. Based on the evidence, certain competitors such as Techtronics responded by copying Chamberlain’s patented opener and putting its own name (or housing) over it.

Chamberlain sued. A jury found that Techtronics was willfully infringing Chamberlain’s patented device, denied Techtronics’ anticipation and obviousness defenses; and awarded damages that the trial court later trebled. Techtronics also filed an inter partes review (IPR) petition with the PTO’s Patent Trial and Appeal Board. But the PTAB refused to consider Techtronics’ petition on its merits, finding it didn’t even meet the standard to trigger the PTAB’s invalidity review. Chamberlain’s case and technology looked strong.

Enter the Federal Circuit and the two-step framework that the Supreme Court’s Mayo and Alice precedents fashioned for determining patent eligibility under Section 101.

The Mayo-Alice Framework for Determining Ineligibility

Step one of this well-known framework examines whether a patent claim “is directed to” one of the three categories that the Court has long said are ineligible for patent protection under 35 U.S.C. §101; namely, an abstract idea; a law of nature (such as Newton’s law of gravity), or natural phenomenon (such as a new plant or new mineral discovered in the earth). Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1294 (2012). If so, step two assesses the elements of the patent claim to determine, whether considered individually or in combination thereof, those claim elements demonstrate an “inventive concept”–i.e., something “significantly more than … the ineligible concept itself” and different than what the prior art had already shown was “well-understood, routine,” or “conventional.” Mayo, 132 S. Ct. at 1294-98. In short, a claim that is directed to an abstract idea, without an inventive concept, is not eligible for a patent under Section 101.

The Federal Circuit’s Definition and Application of “Directed to …” Requires a “Focus” on the “Claimed Advance Over the Prior Art”

Applying this framework, the Federal Circuit made quick work of Chamberlain’s patent judgment below, and of its garage-door opener claims.

On step one, the Federal Circuit applied its own definition of the Mayo-Alice “directed-to” phrase. As the Federal Circuit reads it, “directed to an ineligible concept” means the ineligible concept is the “focus of the claimed advance over the prior art.” E.g., Training Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019); Affinity Labs. of Texas, LLC v. DIRECTTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Based on its review of the Chamberlain patent’s claims and specification, the court determined that the “focus of the claimed advance” for the garage-door opener was on its “wireless” communications only—not its claimed physical features. The opinion didn’t address whether the claimed opener solved problems on two-way communications.

Instead, that “wireless” focus meant the garage-opener claim was directed to an impermissible abstract idea, said the Federal Circuit. Notably, though, under the Supreme Court’s and Federal Circuit’s Mayo-Alice cases, this was not because the Chamberlain patent claimed something that was “existing in thought or as an idea”—i.e., per a common dictionary definition of “abstract,” as opposed to something “physical or concrete [in] existence.” Rather, under the precedent, the claim on Chamberlain’s opener was abstract because the patent’s “wireless” concept resembled claim text in other judicial opinions and cases, which described it as abstract.

Moving to step two, the Federal Circuit determined that the “wireless” garage opener didn’t amount to an “inventive concept.” After all, said the court, the patent admitted it used conventional technology to implement its claimed “wireless” advance. Moreover, step two precludes consideration of the ineligible concept itself in determining whether the claim elements present an inventive concept. Thus, since the abstract or ineligible concept here from step one was the “wireless” aspect of the garage opener, that part of the claim couldn’t be considered for the “inventive-concept” test in step two. And since that abstract “wireless” was the only part of the claim cited as inventive or as a “claimed advance,” the rest of the claim was merely conventional and well-known, not inventive. The court also denied arguments that it was impermissibly assessing “novelty” or “obviousness” in this threshold Section 101 eligibility test. And it gave no consideration to the jury and trial court’s upholding of the patent claims over prior-art challenges based on novelty and obviousness, or to the PTAB’s denial of an IPR that sought invalidity review.

As noted above, Chamberlain’s petition urges that a “patent emergency” has arisen and that the Court must address it immediately to stop the wide-ranging harm of the ineligibility test. We agree, with the caveat that, if the Supreme Court doesn’t intervene, the Federal Circuit should and, in its en-banc capacity, it should fix both errors with the current step-one test.

Courts Still Must Read and Evaluate the Patent Claim “As a Whole”

The Chamberlain petition highlights two fundamental failings with the Federal Circuit’s Section 101 eligibility rulings:

(1) the reductionist definition that the Federal Circuit applies to the step one “directed to” test, dissecting the claim under review into its old or conventional elements versus those elements that purportedly represent the “focus of the claimed advance over the prior art”; and

(2) the patent law’s assessment of what an ineligible “abstract idea” is and how that definition—or absence thereof—has similarly led courts to reduce a multi-element claim to a single concept.

As a result of each such error, explains Chamberlain, the Federal Circuit systematically fails to assess the eligibility of a patent claim “as a whole”—i.e., in view of all its elements.

Chamberlain’s garage opener and petition surely warrant immediate review, and for many of the right and first principle reasons. Foremost, and as more fully addressed below, the broadly stated text of the Section 101 eligibility law says nothing about limiting eligible claims to those where the court’s already figured out or can adjudge the claim’s “patentable advance.” That’s a question for “later” on the merits—a question on patentability itself, as the Supreme Court held years ago. See Diamond v. Diehr, 450 U.S. 175, 189-91 (1981). At minimum, the Federal Circuit’s “claimed advance over prior art” definition has no place as the “step one” question on whether a claim is “directed to” or focused on an ineligible abstract idea. See, e.g., id. (considerations of prior art or what was conventional or known at time “have no relevance” to Section 101 eligibility). As to the “abstract idea” exception for Section 101 eligibility, the lack of a set standard or definition—a rule or principle—continues to hinder the analysis and the proper shaping of this exception. Indeed, the questions raised in Chamberlain highlight why. Accordingly, the Supreme Court should finally put a definition or standard to the Court’s own creation, rather than leaving it to each case to discern what is or is not an “abstract idea,” or what the “abstract” exception even relates to. There is an emergency, and of the kind that Chamberlain describes. One court must respond.

In Part II of this article, we will examine how the Federal Circuit’s approach conflicts with the Patent Act and Supreme Court precedent, and what the Courts must do to remedy it.

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