By Bryan K. Wheelock, Principal
In Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, [2015-1411] (December 28, 2015), the Federal Circuit affirmed that claims 8, 9, and 11–18 of U.S. Patent No. 7,394,392 were invalid as drawn to patent-ineligible subject matter under 35 U.S.C. § 101. The claims were directed to a method to screen an equipment operator for impairment (and a corresponding system).
The Federal Circuit applied the two step Mayo test, determining whether the claims at issue are directed to a patent-ineligible concept, and if so, examining the elements of the claim, individually and as an order combination, to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent eligible application. The Federal Circuit agreed that step 1 was met, the claims being drawn to the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment. The Court noted:
None of the cl aims 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.
The Federal Circuit rejected Vehicle Intelligence’s argument that it did not totally preempt the field, noting that “while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter.”
The Federal Circuit also agreed that the claims at issue fail the second step of the Mayo test, finding nothing in the claims sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea. The Federal Circuit further rejected the fact that the method was tied to a particular apparatus, nothing that post-Mayo/Alice, this is no longer sufficient to render a claim patent-eligible.
Vehicle Intelligence attempted to identify inventive concepts, but the Federal Circuit found these to general. 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, and found that was not enough.