Defendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an oversimplification that doesn’t accurately articulate what the claims are actually directed to. This was precisely the government’s error in Thales Visionix Inc. v. United States (Fed. Cir. 2017), where the Federal Circuit found, contrary to the government’s characterization of the claims (which the Claims Court adopted), the asserted claims were not directed to an abstract idea.
Background on the Case
Thales Visionix, Inc. first sued the federal government in Thales Visionix v. USA and Elbit Systems (Ct. Fed. Clm. 2015), alleging infringement of U.S. Patent No. 6,474,159 (“the ’159 patent”), which is directed to inertial tracking of the position of an object relative to a moving platform. The ’159 patent, which issued from a patent application filed in 2000, includes two independent claims that recite:
1. A system for tracking the motion of an object relative to a moving reference frame, comprising:
a first inertial sensor mounted on the tracked object;
a second inertial sensor mounted on the moving reference frame; and
an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.
22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.
The U.S. filed a motion for judgment on the pleadings, alleging that the ’159 patent claims were invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible concept. The U.S. argued that the claims were invalid under the first step of the Alice test because they were directed to an abstract law of nature described by an equation for determining the orientation of an object. Thales responded that the government “mischaracterize[d] the patented inventions as nothing more than ‘unpatentable mathematical expressions of Newton’s laws of motion.’” Thales argued that the claims of the ’159 patent, when all of their limitations were taken together as a whole, “define[d] a combination of physical elements used to address the specific technological problem of tracking a helmet on a moving airplane using specially positioned inertial sensors.”
The Claims Court granted the U.S.’s motion for judgment on the pleadings, finding the asserted claims to be invalid under 35 U.S.C. § 101. Notably, the court’s characterization of the asserted claims substantially mirrored the government’s positions: (1) they were directed to an abstract idea of using a law of nature governing motion to track objects, and (2) they did not provide an inventive concept beyond the abstract idea.
Federal Circuit Reversal
On appeal, the Federal Circuit reversed the lower court’s finding, holding that the asserted claims are not directed to an abstract idea. The Federal Circuit concluded that the asserted claims are instead directed to “systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” In doing so, the Federal Circuit emphasized that “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is ‘directed to’” (emphasis added).
The Federal Circuit reasoned that the use of a mathematical equation to utilize sensors in a new way to more efficiently track an object on a moving platform does not “doom the claims to abstraction,” much like the use of a natural law to preserve liver cells, the use of a database to store tabular data, and the use of a well-known equation to cure rubber in prior cases did not render those claims abstract.
Key Takeaways and Conclusion
The Federal Circuit’s Thales decision underscores the importance of adequately characterizing claims in patent litigation “with enough specificity to ensure the step one inquiry is meaningful,” such that it does not “swallow all of patent law,” as cautioned by the Supreme Court in Alice.
For litigators representing a party challenging the validity of a patent, this means not oversimplifying the substance of the claims in step one of the Alice test, but rather considering their substance as a whole. For example, one way to avoid overgeneralizing patent claims in a § 101 challenge is, as indicated in the Thales decision, to (1) identify whether the claims recite a patent-ineligible concept (e.g., an abstract idea), and (2) then determine whether the patent-ineligible concept is what the claims are indeed directed to. This differs from other common approaches, such as simply identifying a patent-ineligible concept underlying the claim and attempting to support that conclusion with hindsight reasoning.
For patent holders and their counsel, it is important to also adequately characterize claims when arguing their validity and to challenge unsupported overgeneralizations of the claims, as was successfully done here.
The Thales decision should also remind litigants that, even if a party prevails with a § 101 invalidity determination in the trial court, the Federal Circuit often reverses those determinations where they are based on characterizations of the claims that are overly broad or too simplistic.
For patent prosecutors and those pursuing patent protection, the Thales decision reiterates the importance of describing the advantages, solutions, and advancements over the prior art that are provided by the inventive concepts. In Thales, the Federal Circuit emphasized multiple advantages of the disclosed system over the prior art (e.g., increased accuracy, independence, and simplified installation), all of which were well described in the patent application. And, notably, the court included one of these advantages—reduced errors—in its patent-eligible characterization of the claims: “systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.”
 Alice Corp. Pty. V. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014).
 Rapid Litigation Mgmt. Ltd. V. CellzDirect, Inc., 827 F.3d 1042, 1045 (Fed. Cir. 2016) (claiming not just a natural law of cells surviving multiple freeze-thaw cycles, but rather improved processes of preserving a type of liver cell by taking previously frozen and thawed cells, separating viable cells from nonviable ones, and recovering and refreezing the viable cells); Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016) (claiming not just any form of storing tabular data, but instead a self-referential table for a computer database); Diamond v. Diehr, 450 U.S. 175, 177 (1981) (claiming not merely using the “well-known Arrhenius equation,” but rather a specific process of curing rubber using the Arrhenius equation to calculate specific variables).
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