Can Better Drafting Save Your Claim?

The Federal Circuit affirmed the district court’s invalidation of a patent’s claims in Vehicle Intelligence & Safety LLC v. Mercedes-Benz U.S., .No. 2015-1411, 2015 U.S. App. LEXIS 22681 (Fed. Cir. Dec. 28, 2015). The claims at issue were directed to methods and systems for screening equipment operators for impairment, and generally required using an “expert system” to screen an operator and controlling operation of the equipment based on the results of the screen.

Following the Mayo/Alice framework for analyzing whether a claim is directed to ineligible subject matter, the Court first concluded that the claims were directed to an abstract idea. The Court identified “testing operators of any kind of moving equipment for any kind of physical or mental impairment” as the abstract idea to which the claims were directed. The Court implicitly criticized the claim- and application-drafting of the patentee, stating that neither the claims nor the application’s disclosure described in detail any specific type of impairment to be detected, how detection is accomplished, what the claimed “expert system” for detecting was or how to generate it, or any specific ways to control operation of the equipment based on the testing results. The Court characterized such missing description as being “critically absent.”

The Court then held that the claimed “expert system,” even if it were a hardware implementation, did not render the claims a patent-eligible application, relying on the application’s disclosure that the hardware implementation could be accomplished by “commercially available microprocessor[s].” Such generic computer implementation has generally been considered insufficient to render claimed subject matter patent-eligible, and has been characterized as “merely a drafting effort designed to monopolize the [abstract idea] itself.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 182 (2012); but see DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014) (holding that claims requiring only generic computer implementation were patent-eligible because they addressed a computer-centric problem in a way that deviates from normal operation).

In what may result in an extension of the rationale that generic computer implementation will not save a claim, the Court stated that implementation on existing vehicle equipment would not have rendered the claims patent-eligible. Adding public domain “vehicle equipment” to the types of hardware implementations that are insufficient may increase the likelihood that other courts and the U.S. Patent Office will characterize implementation on any public domain equipment as insufficient, continuing the deviation from both the patent statute and court precedent. See 35 U.S.C. § 100 (2012) (defining patent-eligible subject matter as including “new use[s] of a known process, machine, manufacture, composition of matter, or material”); Diamond v. Diehr, 450 U.S. 175, 187–89 (1981) (holding that claims involving using an algorithm (an abstract idea) to improve a known process (curing rubber) utilizing known hardware (a rubber molding press) was patent-eligible).

Although the Courts have looked down on what they characterize as mere “drafting effort[s]” to characterize an invention as patentable subject matter, it is interesting to note that the primary criticism leveled at these claims involved the lack of description in the claims and application. It is possible that a more careful “drafting effort,” including much more detail on what the advance was, what tangible hardware was required to implement that advance, and what tangible results it would have produced, would have saved these claims. Practitioners and applicants should continue to exercise caution when drafting claims and the supporting disclosure to tailor them to the ever-changing landscape of patent-eligibility.