ITC Affirms ALJ’s Determination That Patent Claims To An Automated Paving Machine Are Directed To Unpatentable Subject Matter
07/23/2019On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord. In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019). The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.
A patent action in the ITC is an enforcement procedure that patent owners can use instead of, or in conjunction with, a district court infringement litigation. See 19 U.S.C. § 1337. The patent owner files a complaint with the ITC alleging, inter alia, patent infringement. The ITC then determines whether to institute an investigation. If the ITC does institute an investigation, it typically proceeds with the patent owner and the accused infringer(s) as parties to the investigation. In some cases, the ITC investigative staff will also take a role as a party to the investigation. An ALJ ultimately issues an initial determination, which is then reviewed de novo and either adopted or rejected by the ITC itself.
In this case, the ITC affirmed that asserted claims of U.S. Patent No. 9,045,871 were invalid as claiming patent-ineligible abstract ideas under 35 U.S.C. § 101.
Section 101 of the United States patent laws prescribes the categories of inventions and discoveries that can properly be the subject of a patent: “any new and useful process, machine, manufacture, or composition of matter.” These categories are limited by judicially-created proscriptions against patenting abstract ideas, laws of nature and natural phenomena.
The Supreme Court has set out a two-step framework for determining patent eligibility:
- determine whether the claims at issue are directed to one of the patent-ineligible concepts (such as an abstract idea); and, if so, then
- determine whether the elements of the claim, considered both individually and as an ordered combination, recite an “‘inventive concept’ – i.e., an element or combination of elements that is ‘sufficient to ensure that the practice amounts to significantly more than a patent upon the [ineligible concept] itself.’
The ITC applied this two-step framework to the ’871 patent claims, which recited, for example, a paving machine comprising a paving assembly with “adjustable components,” “actuators” and “sensors” to arrange the assembly into “a plurality of different configurations”; an “operator input device” for saving and selecting particular configurations; and a “controller” for implementing operator requested configuration changes.
With respect to Alice’s step one, the ITC concluded that these asserted claims are drawn to the abstract idea of automating the otherwise human-controlled configuration of a conventional paving machine using conventional sensors, actuators and controllers to store and recall user-chosen configurations. According to the ITC, simply limiting this automated configuration operation to the field of paving machines does not make the idea patentable.
With respect to Alice’s step two, the ITC found that the asserted claims also lacked an inventive concept. In arriving at this conclusion, the ITC emphasized that the ’871 patent described and claimed only generic components performing their conventional functions. The ITC rejected as insufficient the accused infringer’s assertions that improved paving speed and accuracy established an inventive concept.
Commissioner Schmidtlein dissented from the ITC’s decision with respect to patentability under Section 101, finding that the ’871 claims are not directed to an abstract idea, but to an improved paving machine.