Federal Circuit Upholds Two Courts’ Findings that Remote Training Patents are Ineligible

“The CAFC said the technology recited in the claim merely serves a ‘a conduit for the abstract idea’ and does not provide a technological solution to a specific technological problem.”

https://depositphotos.com/35440567/stock-photo-ineligible-warning-road-sign-illustration.htmlThe U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed one district court decision and dismissed another as moot, finding that Riggs Technology Holdings, Inc.’s U.S. Patent No. 7,299,067 for remote education and training systems is patent ineligible as it is “plainly drawn to an abstract idea.” Judge Chen authored both opinions.

Riggs sued Cengage Learning, Inc. in the U.S. District Court for the District of Massachusetts for infringement of the ‘067 patent, but the district court granted Cengage’s Motion to Dismiss based on patent ineligibility. The court held that the patent “is plainly drawn to an abstract idea,” and that “the concept underlying the claims of the ’067 patent—providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible.”

Just Like Killian

In its discussion, the Federal Circuit explained that representative Claim 1 of the patent, which is directed to “a method of managing training completed remotely at a hand held device,” followed by seven steps, describes the “abstract mental process of managing training that was provided remotely.” While Riggs had attempted to argue that the claim addresses a problem rooted in computer technology to solve a problem in the realm of computer networks, the CAFC said the technology recited in the claim merely serves a “a conduit for the abstract idea” and does not provide a technological solution to a specific technological problem. The Federal Circuit cited to In re Killian as precedent for its analysis:

“In Killian, we held claims reciting a “search algorithm for identifying people who may be eligible for [Social Security Disability Insurance] benefits that they are not receiving” were “directed to [a] patent-ineligible abstract mental process.”… We explained that the “claims must fail Alice/Mayo step one as they are directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner.”

Like Killian, Riggs’ Claim 1 is directed to collecting and storing information using a generic computer, said the court.

Turning to Alice/Mayo step two, the appellate court also said the claim merely instructed the practitioner to perform the abstract steps on a generic computer, as was the case in Killian. The key inventive concept recited in Riggs’ patent is performing remote training on a handheld device, like a mobile phone, but the CAFC said the Supreme Court explained in Alice that “‘limiting the use of an abstract idea to a particular technological environment’ is not enough for patent eligibility.” The specification and the claims both use language that makes it clear the steps recited in claim 1 are not meant to be completed with anything other than “well-understood technology used in a routine and conventional manner,” said the court, and thus the claim failed at step two as well.

Ok to Dismiss at 12(b)(6)

Finally, Riggs had argued that the case should not be dismissed at the Rule 12(b)(6) stage because whether the claims cover conventional technology or not relies on a factual analysis that is not conducted at this preliminary stage. But the CAFC, citing Aatrix Software, Inc. v. Green Shades Software, Inc., said, “[w]e have held that patent eligibility can be determined at the Rule 12(b)(6) stage ‘when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” The court added that, since the specification clearly admits that the additional claim elements are routine and conventional, “it will be difficult, if not impossible, for a patentee to show a genuine dispute,” further justifying dismissal at the 12(b)(6) stage.

In a separate case brought by Riggs against Vagaro, Inc. in the Northern District of California alleging infringement of the same patent, the same panel of CAFC judges dismissed Riggs’ appeal as moot based on the reasoning set forth in the appeal above.

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Author: alexmillos 

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13 comments so far. Add my comment.

  • [Avatar for concerned]
    concerned
    January 20, 2023 04:20 am

    Curious:

    Thank you for the insights. I will pass the same along to B.

  • [Avatar for Curious]
    Curious
    January 19, 2023 01:14 pm

    The en banc was denied. B approached me about a week ago suggesting an amendment to the claims. I agreed.
    Suggestion – cancel all of the old claims and start anew. The old claims were very sloppy to begin with. Your claims should be half as long. Focus on the different database interactions. Also, write the claims in the perspective of a single entity. Otherwise, it may be impossible to infringe your claims. As you prepare the claims, ask yourself, is any of the language I’m using referring to something that is technical – if not, then ask yourself why is it in the claim? For example, you include the phrase “a State licensed care facility.” Is that term really necessary? Does it help with 102/103. It certainly doesn’t help with 101. If not, drop it.

    Same problem: We would meet the law as written by Congress but could not outguess the courts on the ever changing s101 jurisprudence.
    Moreover, the courts can and have written opinions that have no reality to the truth.

    Stop acting like a victim and be a problem solver. Every applicant who has had an application rejected under 101 (and there have been tens of thousands can say the same. It does you no good. Your examiner has allowed applications. Look them up. Try to find something comparable to what you are doing. Try to appreciate the language they used to get their claims allowed by this particular examiner. Solve the problem.

    So here we go: B probably will spend a lot of time trying to work within the system instead of complaining about it, same result as before is the fear I have.
    You are limited by what is in your specification, which I have only very briefly scanned. If your original patent attorney was any good, there may be stuff in there you can use. The easiest way to get around 101 is to try to identify a “technical problem” for which your claims provide a technical solution.

    Go to the Board website and do a search on 101 decisions that were reversed coming out of the 3600 tech center. They aren’t precedential but if the facts are somewhat close, you can still cite them.

    We probably will get 10 court cases that says no patent on the amended claims, and B will give them 20 court cases supporting a patent.
    I’m sorry, but B’s 20 court cases probably wouldn’t say what he thinks they say. He reads decision far too over-expansively.

    Accordingly, you can say we are trying it your way.
    It is the way that works.

    Getting around 101 has been an exercise in opening a lock. You were trying a key that was first tried many, many years ago that never worked. However, there are other keys that have worked. You need to keep trying key after key after key until you find something that works. Or until Congress changes the law, which I wouldn’t hold my breath for.

  • [Avatar for concerned]
    concerned
    January 19, 2023 05:54 am

    Curious:

    The en banc was denied. B approached me about a week ago suggesting an amendment to the claims. I agreed.

    Primary Examiner and you could be given carte blanche discretion over how B should re-write these claims. I know both Primary Examiner and you would decline such an invitation, Primary Examiner said as much previously.

    Same problem: We would meet the law as written by Congress but could not outguess the courts on the ever changing s101 jurisprudence.
    Moreover, the courts can and have written opinions that have no reality to the truth.

    So here we go: B probably will spend a lot of time trying to work within the system instead of complaining about it, same result as before is the fear I have.

    Who really knows what is patentable? We probably will get 10 court cases that says no patent on the amended claims, and B will give them 20 court cases supporting a patent.

    Accordingly, you can say we are trying it your way.

  • [Avatar for concerned]
    concerned
    January 18, 2023 04:54 pm

    There have been plenty of people come to this forum stating that the ever changing patent rules are still not clear. And SCOTUS refuses to clarify.

    It will be difficult for B to draft new claims when the rules are not clear or ever changing.

  • [Avatar for Curious]
    Curious
    January 18, 2023 01:53 pm

    Curious: Which rules? The rules that are in place by Congress which I met per the other side, or the “change as we go” rules legislated by judges from the bench?
    Which rules? Look at the 2019 PEG. Look at 90% of the Federal Circuit cases since Alice that preceded your decision. Based upon all of these, you were DESTINED to lose. And BTW, judges have been saying what the law is for a couple centuries now in the US – get used to it.

    And how many granted patents have now been reversed by rule changes after the fact?
    You can either adapt or you can die. You seem to have no interest in adapting so your patent application will assuredly die. However, that’s YOUR choice.

    People who are sworn to uphold the laws properly legislated by Congress should be offended by the current patent environment.
    There are plenty of people offended by the current patent environment. You aren’t the only one impacted by the current patent regime. However, if you are going to play this game, you had better learn the rules and be able to adapt when the Courts do change the rules. Complaining to other players about how unfair the rules of the game are isn’t going to change anything.

    If all the time you and your attorney have spent complaining were actually spent on drafting good claims, you might have a patent by now. While I sympathize with your plight, I don’t sympathize with your reaction to it. You have consistently taken the least likely path to getting a patent.

    Since B has been silent, I don’t know whether you’ve filed an en banc request or filed a petition for cert with the Supreme Court. If you filed for an en banc request, I suspect it has been denied already. You going to the Supreme Court?

  • [Avatar for concerned]
    concerned
    January 18, 2023 12:51 pm

    Curious: Which rules? The rules that are in place by Congress which I met per the other side, or the “change as we go” rules legislated by judges from the bench?

    And how many granted patents have now been reversed by rule changes after the fact?

    People who are sworn to uphold the laws properly legislated by Congress should be offended by the current patent environment.

  • [Avatar for Curious]
    Curious
    January 18, 2023 12:30 pm

    Just in case there is any confusion on the point, the test “technological solution to technological problem” is an echo of the GATT-TRIPS inspired enquiry into eligibility/patentability under the EPC, both at the EPO and in the courts in England.
    Still confused about how the US Courts don’t care a whit about what happens in the EPO? After 15 years or so, you still don’t get this? It must be your German arrogance shining through.

    Presumably, patent drafters in the USA have for many years now been drafting differently, more in the European style.
    More German arrogance. Patent drafters it the USA care little about the European style. US law is different, and we draft for US law.

  • [Avatar for Curious]
    Curious
    January 18, 2023 12:26 pm

    No one on Earth since the inception of the SSDI program in 1956 has solved the SSDI problem at hand mentally, with or without a computer. That is just plain fact or the problem would not still exist in 2023
    No relevant to a 101 inquiry. You’ve been told this many times but still don’t understand that your argued point doesn’t help you.

    Consent cannot be waived mentally, that is just plain fact, otherwise a person could mentally waive these judges’ consent and steal their identity for illegal purposes.
    Not claimed. I’ve written this many times. Regardless, the waiving of consent was never going to save you from 101. You cannot win a game (checkers, chess, poker, whatever) if you don’t know the rules of the game.

    Rulings that lack common sense on the surface lead to distrust of the patent system.
    I’ll agree as to this point. However, the Federal Circuit’s ruling in Killian is very consistent with their other rulings. The Federal Circuit MUST follow their own precedent. They told you that. Your attorney should have told you that. You were destined to lose at the Federal Circuit.

    Like being also told that a claim is routine, well understood and conventional when the evidence on record and never addressed proves nobody on Earth has ever used the claimed process, individually in parts or collectively.
    Again, you need to know the rules of the game first. Not EVERYTHING in a claim needs to be routine, well understood and conventional – only the non-abstract elements. If you want to win the game with the Examiner, you (and your patent attorney) needs to understand that point first.

    Of course, when that routine, well understood and conventional argument becomes too silly too advance any further, just switch rejection theory to mental steps.
    Your rejection preceded the 2019 Patent Eligibility Guidelines (PEG), the Board (admittedly) introduced a new grounds of rejection based upon the 2019 PEG. I’ve seen this many times before. It happens. Get over it.

    This statement lacks truth. Chen even admitted that all of the steps in Killian couldn’t be performed mentally.
    As a 100 patent attorneys who have to deal with lousy 101 rejections all of the time, and my guess is that 85-95% of them would agree with Chen that what was being claimed in Killian was directed to an abstract idea.

    FYI, generic computers do not comprehend data
    That is accurate only in using a very narrow definition of the term “comprehend.” If you had 20 arguments to make and could only present 3 to the Supreme Court, this would probably rank 19th or 20th on the list.

    the PTAB held against Killian exactly because the claims involved “identifying” and “determining” steps
    Do you prosecute patent applications? If so, you should know that “identifying” and “determining” are almost automatically suspect when it comes to a 101 analysis. For example, claim 1 of Killian recites “determining whether the person is receiving SSDI adult child benefits based on the SSDI status information contained within the Federal Social Security database record through the computer network.” Language like this is automatically going to be deemed a “mental” process because all it is reciting is looking at a data record, which is something that can be done mentally. The fact that the data record is in a database isn’t going to save it.

    BTW – B. Whatever happened to the en banc petition? I kept looking in on the Federal Circuit Blog to see when your petition would pop up, but it never did. I was looking forward to reading your arguments and contemplating your case citations.

  • [Avatar for B]
    B
    January 18, 2023 10:05 am

    ““In Killian, we held claims reciting a “search algorithm for identifying people who may be eligible for [Social Security Disability Insurance] benefits that they are not receiving” were “directed to [a] patent-ineligible abstract mental process.”

    This statement lacks truth. Chen even admitted that all of the steps in Killian couldn’t be performed mentally.

    “We explained that the “claims must fail Alice/Mayo step one as they are directed to collection of information, comprehending the meaning of that collected information . . . “

    FYI, generic computers do not comprehend data, and the PTAB held against Killian exactly because the claims involved “identifying” and “determining” steps.

    How many claims in how many patents have such language?

    How many flowcharts in how many patent specifications have diamond-shaped boxes?

    Chen, Taranto and Stoll shouldn’t be allowed to judge a pie eating contest.

  • [Avatar for Max Drei]
    Max Drei
    January 18, 2023 07:11 am

    Just in case there is any confusion on the point, the test “technological solution to technological problem” is an echo of the GATT-TRIPS inspired enquiry into eligibility/patentability under the EPC, both at the EPO and in the courts in England. In England it is part of the initial eligibility enquiry. At the EPO it is not reached until one arrives at the final part of the examination of patentability, namely the enquiry into obviousness. The English courts have averred that the EPO approach is intellectually flawed. Perhaps jurists in the USA think that too.

    I see that the patent here in suit was drafted in the year 2001. Presumably, patent drafters in the USA have for many years now been drafting differently, more in the European style.

  • [Avatar for concerned]
    concerned
    January 18, 2023 05:50 am

    In re: Killian footnote (1): Mental process, as the courts use the term, does not really have to mean it is a mental process with or without a computer. It is what the court says is a mental process whether the statement is true or false, just like a targeting call in the National Football League. Because the officials say so even though the video replay reveals otherwise.

    No one on Earth since the inception of the SSDI program in 1956 has solved the SSDI problem at hand mentally, with or without a computer. That is just plain fact or the problem would not still exist in 2023.

    Consent cannot be waived mentally, that is just plain fact, otherwise a person could mentally waive these judges’ consent and steal their identity for illegal purposes.

    Rulings that lack common sense on the surface lead to distrust of the patent system. Like being also told that a claim is routine, well understood and conventional when the evidence on record and never addressed proves nobody on Earth has ever used the claimed process, individually in parts or collectively.

    Of course, when that routine, well understood and conventional argument becomes too silly too advance any further, just switch rejection theory to mental steps.

    Rinse and repeat rejection theories until the applicant just goes away.

  • [Avatar for Anon]
    Anon
    January 17, 2023 08:08 pm

    I would need to see more than merely the claim to put validity to the assertion that “the claim addresses a problem rooted in computer technology to solve a problem in the realm of computer networks,” as it is just not apparent that the claim is actually addressing any problem rooted in computer technology.

    Even keeping in mind that the claim need not flesh out the problem (that is what can be done in the specification), the claim here just does not provide any sense of an advance.

    Sadly, this is likely something better off removed from the patent system under prior art sections of the law, but has fallen to the dispose-of-all of eligibility.

  • [Avatar for Pro Say]
    Pro Say
    January 17, 2023 06:31 pm

    Not even Susan, “Stop the insanity!” Powter could convince the CAFC to stop their insanity.

    Not even Susan.

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