The Federal Circuit has issued another (non-precedential) opinion providing an example of a Mayo/Alice "abstract idea" analysis applied to a vehicle system for testing drivers. The opinion provides numerous hints and guidance as to facts that could have enabled the patent to survive. Those drafting and prosecuting patent applications, particularly in the autonomous or intelligent vehicle area, should take note of the analysis in this case.
Specifically, in Vehicle Intelligence v. Mercedes-Benz USA, LLC and Daimler AG., the patentee sued Mercedes and Daimler under U.S. Patent 7,394,392. The claims at issue focused on an "expert system" for testing drivers. The inventor, Kevin Roe, appears to be a patent attorney and the attorney who drafted and prosecuted the application, and handled the appeal. Asserted claim 8 of the patent is set forth below:
8. A method to screen an equipment operator for impairment, comprising: screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator; selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.
The Federal Circuit analyzed the claims under both step 1 and step 2 of the Mayo/Alice test and found neither were met and thus the claims were invalid as improperly claiming only an abstract idea. The court's analysis is instructive and gives several hints as to facts that could have changed the outcome of the decision.
With regard to step 1, which asks whether the claims at issue are directed to a patent-ineligible concept, the court believed the claims were too general, and specified merely an abstract concept without any real technical details as to how it would operate or perform the desired task:
The claims at issue are drawn to a patent-ineligible concept, specifically the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment. None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.
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But critically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics; assuming these measurements can be made, how the decision module determines if an operator is impaired based on these measurements; assuming this determination can be made, how the decision module decides which control response to make
; and assuming the control response decision can be made, how the “expert system” effectuates the chosen control response. At best, the ’392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system.”
With regard to step 2, which asks whether the claims considered as individual elements or an ordered combination disclose an inventive concept sufficient to transform the abstract idea into a patent-eligible application, the court again found the claims lacking. The court noted several times that a critical failure of the patent is its lack of detail on how the abstract ideas can actually be implemented and/or achieved.
... But markedly absent from the ’392 patent is any explanation of how the methods at issue can be embedded into these existing modules....
... But the claims do not specify what screening should be done or how the expert system would perform such screening. They do not explain how to select the tests to run or even what tests to select from. They do not explain how the “time-sharing allocation” on a processor should be done. And they do not explain how the expert system works to screen for impairment s or how such systems can be portioned out over one or more equipment modules. The claims merely state the abstract idea of testing an equipment operator for
impairments using an unspecified “expert system” running on equipment that already exists in various vehicles.
The court's analysis provides numerous examples of deficiencies that appear to be critical to the conclusion that the claims covered patent ineligible subject matter. While it is not clear how much detail, or which particular details, would change the outcome, the decision makes clear that when drafting an application to vehicle-related software, it is important to discuss technical details and describe real-world implementation and integration aspects in order to better fend off a Section 101 Alice attack.