{"id":113968,"date":"2019-09-26T13:15:10","date_gmt":"2019-09-26T17:15:10","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=113968"},"modified":"2019-09-26T12:36:33","modified_gmt":"2019-09-26T16:36:33","slug":"omalley-chen-disagree-part-ptab-determination-cbm-review-distinguishing-chamberlain","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2019\/09\/26\/omalley-chen-disagree-part-ptab-determination-cbm-review-distinguishing-chamberlain\/id=113968\/","title":{"rendered":"O\u2019Malley and Chen Disagree in Part with PTAB Determination in CBM Review, Distinguishing Chamberlain<\/i>"},"content":{"rendered":"

\u201cUnlike in Chamberlain<\/em>, SIPCO\u2019s claimed invention does not simply use \u2018well understood,\u2019 off-the-shelf wireless technology for its intended purpose of communicating information.\u201d \u2013 CAFC decision<\/p>\n<\/div>\n

\"\"

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit<\/p><\/div>\n

The Federal Circuit issued a precedential decision on Wednesday reversing-in-part, vacating and remanding a decision of the Patent Trial and Appeal Board that had found certain claims of U.S. Patent No. 8,908,842<\/a> (the \u2019842 patent) subject to covered business method review, patent ineligible and unpatentable for obviousness. SIPCO LLC v. Emerson Electric<\/a><\/em> (Fed. Cir., Sept. 25, 2019). The opinion was authored by Judge Chen. Judge Reyna dissented in part.<\/p>\n

The PTAB applied only part two of 37 C.F.R. \u00a742.301(b)<\/a> to find that the patent qualified for CBM, as it contained no technical solution to a technical problem. The representative claims at issue were:<\/p>\n

    \n
  1. A device for communicating information, the device comprising:
    \na low-power transceiver configured to wirelessly transmit a signal comprising instruction data for delivery to a network of addressable devices;
    \nan interface circuit for communicating with a central location; and
    \na controller coupled to the interface circuit and to the low-power transceiver, the controller configured to establish a communication link between at least one device in the network of addressable and the central location using an address included in the signal, the communication link comprising one or more devices in the network of addressable devices, the controller further configured to receive one or more signals via the low-power transceiver and communicate information contained within the signals to the central location.<\/li>\n<\/ol>\n

    Dependent claims 3 and 4:<\/p>\n

      \n
    1. The device of claim 2, wherein the remote device is a [sic] associated with a vending machine.<\/li>\n
    2. The device of claim 2, wherein the remote device is associated with an Automated Teller Machine (ATM).<\/li>\n<\/ol>\n

      CBM Institution<\/strong><\/h2>\n

      The Board instituted the CBM on both Section 101 and 103 grounds, determining that \u201cclaim 3\u2014associating the device with a vending machine\u2014and claim 4\u2014associating the device with an ATM\u2014recited apparatuses \u201cused in the practice, administration, or management of a financial product or service \u201d under \u00a718(d)(1),\u201d according to the Federal Circuit opinion. In finding that the claims were not drawn to a technical solution, the PTAB said that \u201cthe features of claim 1, as incorporated in dependent claims 3 and 4\u2026are no more than generic and known hardware elements and routine computer functions,\u201d said the Court. The only problem being solved was \u201cthe financial problem of reducing the cost of having to dispatch service personnel to fix these machines frequently,\u201d said the Board. In its final written decision, the PTAB cited Versata Development Group, Inc. v. SAP America, Inc.<\/a><\/em>, 793 F.3d 130 6, 1327 (Fed. Cir. 2015) to support this finding.<\/p>\n

      Construction<\/strong><\/h2>\n

      The Board also rejected SIPCO\u2019s proposed construction of \u201clow-power transceiver.\u201d SIPCO proposed the construction \u201ctransmits and receives signals having a limited transmission range,\u201d but the Board disagreed that the term \u201clow-power\u201d as used in claim 1 required that the device transmit and receive signals only within a \u201climited transmission range,\u201d wrote the Court.<\/p>\n

      The Board said the construction \u201cshould \u2018encompass\u2019 a device that \u2018transmits and receives signals having a limited transmission range\u2019 but declined to limit its construction to that phrase.\u201d<\/p>\n

      Finally, the PTAB found the claims patent-ineligible under Section 101 because they were directed to \u201cthe abstract concept of \u2018establishing a communication route between two points to relay information\u2019 and did not contain any additional inventive concept\u201d and also found the \u2019842 patent obvious.<\/p>\n

      CAFC Discussion<\/strong><\/h2>\n

      In its discussion, the Federal Circuit found that the Board\u2019s construction of \u00a0\u201clow-power transceiver\u201d did not sufficiently convey the meaning of the term \u201clow-power\u201d:<\/p>\n

      “The specification explains that the reason that the \u2019842 patent contemplates a transmitter having low power is \u2018so that a user will have to be in close proximity, (e.g., several feet) to the receiver\u2026. It is only if the signal transmission is limited in range that the problems of unwanted circumvention, contention, and unlawful interception of the electromagnetic signals\u2026are alleviated.”<\/p><\/blockquote>\n

      The Court thus reversed the Board\u2019s construction and construed it to mean \u201ca device that transmits and receives signals at a power level corresponding to limited transmission range.\u201d<\/p>\n

      The Court then found that the Board\u2019s \u201cmisreading and mischaracterization\u201d of the features of Claim1 in its analysis of dependent claims 3 and 4 caused it to incorrectly conclude that the claims did not provide a technical solution to a technical problem. The Court wrote:<\/p>\n

      \u201cThe technical problem resolved by the claims was how to extend the reach of an existing communication system from a central location to a remote, unconnected device while protecting against unwanted interference with the transmitted signals. The claims solve this problem with a technical solution: the creation of a two-step communication system that communicates information through a low-power, i.e., limited transmission range, transceiver over a first, wireless step, that taps into the intermediate node\u2019s existing network connection to transport information to the central location.\u201d<\/p><\/blockquote>\n

      Not Chamberlain<\/em><\/strong><\/h2>\n

      In a footnote, the Court distinguished its reasoning from its finding in the garage door-opener case, Chamberlain Group, Inc. v. Techtronic Industries Co.<\/a>, <\/em>in which the Court found claims reciting wireless communication of status information about a movable barrier operator to be directed to an abstract idea. The footnote continued:<\/p>\n

      \u201cUnlike in Chamberlain, SIPCO\u2019s claimed invention does not simply use \u201cwell understood,\u201d off-the-shelf wireless technology for its intended purpose of communicating information,\u201d said the Court. \u201cInstead, SIPCO\u2019s claim 1 provides a more specific implementation of a communication scheme through its two-step communication path that combines an established communications network with a short-range wireless connection between a low-power transceiver and an intermediate node on the established network. SIPCO\u2019s two-step solution extends the reach of the existing network while overcoming problems of interference, contention, and interception.\u201d<\/p><\/blockquote>\n

      Finally, the Court declined to address whether the claims satisfied the first part of Section 42.301(b)\u2014\u201cwhether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art”\u2014itself, and said that the Board should instead address it on remand under the proper claim construction.<\/p>\n

      The Court ultimately reversed the Board\u2019s construction of \u201clow-power transceiver,\u201d affirmed the Board\u2019s finding that claims of the patent are \u201cused in .. . a financial product or service\u201d under AIA \u00a718(d)(1), and reversed the Board\u2019s finding that the patent does not \u201csolve[] a technical problem using a technical solution\u201d under its regulation \u00a7 42.301(b), in addition to remanding to the Board for consideration of part one consistent with the opinion and vacating all of the Board\u2019s unpatentability determinations.<\/p>\n

      Dissent<\/strong><\/h2>\n

      Judge Reyna dissented from the Court\u2019s decision to reach its own claim construction and said that the majority was \u201cimproperly reading a functional limitation into the claim from a preferred embodiment.\u201d Judge Reyna noted, however, that he shared the majority\u2019s concern about the Board\u2019s \u201cavoidance of the first prong of the regulatory definition of \u2018technological invention.\u2019\u201d<\/p>\n

      Plea for USPTO Help<\/h2>\n

      The majority judges also lamented Congress\u2019 failure to define \u201ctechnological invention.\u201d In a concluding footnote, the opinion said, \u201cThe parties agree that the AIA does not define what is or is not a technological invention\u2026. The omission of any definition for the phrase \u201ctechnological invention\u201d underscores the importance of meaningful guidance from the Patent Office on \u00a7 42.301(b).\u201d<\/p>\n

       <\/p>\n","protected":false},"excerpt":{"rendered":"

      The Federal Circuit issued a precedential decision on Wednesday reversing-in-part, vacating and remanding a decision of the Patent Trial and Appeal Board that had found certain claims of U.S. Patent No. 8,908,842 (the \u2019842 patent) subject to covered business method review, patent ineligible and unpatentable for obviousness. SIPCO LLC v. Emerson Electric (Fed. Cir., Sept. 25, 2019). Judge Reyna dissented in part. In a footnote, the Court distinguished its reasoning from its finding in the garage door-opener case, Chamberlain Group, Inc. v. Techtronic Industries Co., in which the Court found claims reciting wireless communication of status information about a movable barrier operator to be directed to an abstract idea. \u201cUnlike in Chamberlain, SIPCO\u2019s claimed invention does not simply use \u201cwell understood,\u201d off-the-shelf wireless technology for its intended purpose of communicating information,\u201d said the Court.<\/p>\n","protected":false},"author":76815,"featured_media":66287,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":"","_links_to":"","_links_to_target":""},"categories":[274,7202,82,5519,262,228,3,38597,37020,187,41],"tags":[553,5767,7204,11195,8730,8317,38,49,156,33,1599,1569,8742,40,4106,8774,661,83,34,4992,4313,172,8727],"yst_prominent_words":[54749,54761,54750,54752,54748,54765,54757,54758,54747,54746,54751,54760,54759,54755,54756,24900,24898,54754,54764,54753],"acf":[],"_links":{"self":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/113968"}],"collection":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/users\/76815"}],"replies":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/comments?post=113968"}],"version-history":[{"count":0,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/113968\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media\/66287"}],"wp:attachment":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media?parent=113968"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/categories?post=113968"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/tags?post=113968"},{"taxonomy":"yst_prominent_words","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/yst_prominent_words?post=113968"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}