Federal Circuit Affirms District Court Decision Finding Patent Invalid Under § 101
On January 17, 2023, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the District of Massachusetts holding that certain claims of U.S. Pat. No. 7,299,067 (’067 patent) were not patentable under 35 U.S.C. § 101. Riggs Tech. Holdings, LLC. v. Cengage Learning, Inc., No. 2022-1468, (Fed. Cir. Jan. 17, 2023). The CAFC panel (Taranto, Chen, and Stoll) reviewed the district court’s dismissal de novo and reached the same conclusion as the district court: the representative claim is directed to an abstract idea containing no inventive concept and the patent is not eligible for patent protection.
Riggs sued Cengage for infringing the ’067 patent, which is directed to the management of training for users of remote electronic devices. Cengage moved to dismiss, persuading the district court that “the concept underlying the claims of the ’067 patent—providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible.” The district court further found no inventive concept because the relevant components and features were all generically defined and conventional.
The CAFC applied the two-step test for determining patent eligibility under the Supreme Court’s Alice opinion. Step one asks: are the claims directed to a patent-ineligible concept, such as an abstract idea? Step two asks: if so, is there an inventive concept sufficient to transform the abstract idea into a patent-eligible application?
At step one, the CAFC concluded that the representative claim is directed to the “abstract mental process of managing training that was provided remotely,” and the steps claimed are mental tasks routinely done by humans. Claims directed to such human tasks have been held to be patent-ineligible abstract ideas in prior cases. Likewise, performing such steps on a generic computer does not save the claim. And because the claimed invention collects and stores information using the computer in its normal expected manner, the representative claim fails Step One of the Alice test.
At step two, the CAFC held that the representative claim lacks an inventive concept, noting that applying an abstract idea with a computer or “limiting the use of an abstract idea to a particular technological environment is not enough for patent eligibility.” (internal quotations omitted). Notably, the CAFC cited the patent specification for remarking that various devices and features of the claim were “known in the art,” and noted that, because the claim employed routine and conventional tools in their normal manner, there was no inventive concept.
Accordingly, the CAFC held that the claim is not directed to patentable subject matter. The Riggs decision is the latest in a long line of cases stemming from the Supreme Court’s Alice decision that adds to the contours of patent subject matter eligibility.