California and Delaware District Courts find claims patent eligible under Alice two-step
United States District Courts for the Districts of California and Delaware separately denied motions to dismiss brought under 35 U.S.C. § 101.
The courts found claims directed to vibration mobile phone technology to be not abstract and patent eligible because under the Alice two-step, they claim an unconventional technological solution to a technological problem.
- Claims that recited a specific unconventional technological solution (the specific components and how they were configured to perform haptic feedback or vibration function in response to specific events) to an articulated technological problem survived Alice.
- Remaining claims failed Alice because they recited no particular rules or types of rules applied by the processor, used function-based claiming and followed a conventional order of how data is usually analyzed.
- “Manipulation of data in a non-abstract way” was a clue the California court found useful in determining whether a claim amounted to an abstract idea.
In separate cases involving separate patents, two U.S. District Courts found claims directed to mobile phone vibration to be not abstract and so subject matter eligible for patent. In both cases the issue was raised by defendant on a motion to dismiss an action for failure to allege “enough facts to state a claim to relief that is plausible on its face.” Federal Rule of Civil Procedure 12(b)(6).
In Immersion Corp. v. Fitbit, Inc., decided March 5, 2018, the United States District Court for the Northern District of California denied Fitbit’s motion to dismiss because the claims of U.S. Patent Nos. 8,059,105 and No. 8,351,299 were not abstract and so were eligible for patent under 35 U.S.C. § 101 (albeit the court granted defendant’s motion to dismiss the U.S. Patent No. 8,638,301 claims for failing Alice).
In Ironworks Patents v. Apple, decided June 12, 2018, the United States District Court for the District of Delaware denied Apple’s motion to dismiss claims of infringement of U.S. Patent Nos. 6,850,150; 8,847,734; and RE39,231 for similar reasons, even citing Immersion Corp in its decision. Op. at 5.
The patents in suit relate generally to vibration alerts on a computing device. In Immersion Corp the vibration alert was via a haptic feedback from a computing device including mobile devices like a phone. In Ironworks the vibration alert came from a portable device, such as mobile telephones to alert the user.
The decisions in both cases turned on the specific technological solutions (the specific components and how they were configured to perform haptic feedback or vibration functions in response to specific events) to the technological problems they each addressed.
In Immersion Corp, in the ‘105 Patent, specific components were configured to provide haptic feedback to communicate that one of several predetermined user-independent events had occurred. In the ‘299 Patent, specific components were configured to provide haptic feedback to enhance the usefulness of the devices in circumstances where audio or visual notification might not be effective. In Ironworks, specific components were configured to perform specific vibration functions in response to specific events, like “user entry of an incorrect personal identification number code” and “a selected item on a menu of the user interface.”
The respective courts found the technological solutions that were claimed in these patents to overcome the technological problems they addressed to be unconventional. They each concluded at Step One of the Alice framework that these claims were not directed to an abstract idea and were thus subject matter eligible for patent. Accordingly, these courts did not reach Alice Step Two. The motion to dismiss brought by the respective defendants as to the above patents were denied.
This was not the case with the Immersion Corp ‘301 Patent, directed to providing a vibration and associated change in visual display based on interaction between two devices. The vibration device claims failed Alice step 1 and were found to be directed to an abstract idea because the claimed processor configuration amounted to nothing more than gathering data since the claims recited no particular rules or types of rules applied by the processor Cf. McRO. Op. at 29. They were further found to be abstract because they used function-based claiming (i.e., the claims merely describe a desired function, without sufficient detail on how the function is to be performed). Id.
The Immersion Corp ‘301 Patent vibration device claim failed Alice Step Two because it followed a conventional order of how data is usually analyzed: data is first received, then processed, and then signals are outputted as a result. Op. at 33.
The take-away from Immersion Corp and Ironworks is that claims will not survive Alice unless they claim an unconventional technological solution to a technological problem. All claims in Immersion Corp save those of the Immersion Corp ‘301 Patent and all claims in Ironworks survived Alice because they recited a specific technological solution (the specific components and how they were configured to perform haptic feedback or vibration function in response to specific events) to the technological problem they each addressed.
The Immersion Corp ‘301 Patent vibration device claims failed Alice because they recited no particular rules or types of rules applied by the processor (Cf. McRO), used function-based claiming and followed a conventional order of how data is usually analyzed.
Also telling is the discussion by the Immersion Corp court in finding the ’301 Patent to be directed to an abstract idea. As the court explained “In the instant case, claim 27 requires receiving sensor and data signals, determining a resulting change in display, and determining a resulting haptic effect, but “[t]here is nothing in claim  that is directed to how to implement” these functions. As a result, claim 27, like the claims in Two-Way Media and DIRECTV, “manipulates data but fails to do so in a non-abstract way.” Op. at 30. (bold emphasis added)
“Manipulation of something real or a representation of something real, though not the test for determining patent eligibility (the proper test being the Alice two-step), may nonetheless provide a valuable clue to the eligibility of a claim.”