Federal Circuit Considers What A Specification Should Disclose To Survive Alice
| April 13, 2016
Vehicle Intelligence v. Mercedes-Benz (non-precedential)
December 28, 2015
Panel: Moore, Clevenger, and Reyna. Opinion: per curiam.
Summary
Although this decision is non-precedential, it provides a rare glimpse into the Federal Circuit’s consideration of the types of technical detail the specification must disclose in order to support the patent eligibility of a computer-implemented software invention. The decision asks at least twenty times how some claimed component works, how some claimed feature is implemented, how something is made faster, more accurate and reliable, and how existing computer hardware and software components are made different. This decision also reiterates the proposition that lack of total preemption is not enough to overcome patent ineligibility.
Details
Representative method claim 16 is reproduced below:
Claim 16. A system to screen an equipment operator, comprising:
a screening module to screen and selectively test an equipment operator when said screening indicates potential impairment of said equipment operator, wherein said screening module utilizes one or more expert system modules in screening said equipment operator; and
a control module to control operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening module includes one or more expert system modules that utilize at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.
The patentee highlighted the invention’s use of distributed processing amongst “at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module” for the “one or more expert system modules” in order to more efficiently and effectively process the control/response to a detected operator impairment.
Indeed, in making a DDR argument, the patentee argued that its claims are necessarily rooted in computer technology in order to satisfy a need for faster, more accurate and reliable impairment testing of vehicle operators. The patentee points to the specification disclosure of “at least 10 major advantages to using expert system screening in conjunction with already existing modules in equipment to detect impairment in an equipment operator.” The patentee also argued that there is no preemption here since there is prior art showing other ways (that are less advantageous than the present invention) to do various aspects of the claimed features.
But, to the Federal Circuit, the claims do not address a problem arising in the realm of computer technology. Instead, the claims are broadly drafted to cover the “abstract idea” of testing operators (of any kind of moving equipment) for any kind of physical or mental impairment. The Federal Circuit considers the remaining features recited in the claim to amount to nothing significantly more than simply stating “use an expert system.” And, although the specification describes advantages of its invention, “[n]either the claims at issue nor the specification provide any details as to how this ‘expert system’ works or how it produces faster, more accurate and reliable results [than the prior art].” As for lack of preemption, “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 patentee argued that the claims recite at least four “inventive concepts” that make them patent eligible:
(1) screening by one or more expert systems;
(2) selectively testing;
(3) a time-sharing allocation of at least one processor; and
(4) a screening module that includes one or more expert systems that use at least a portion of one or more existing equipment modules.
In response, the Federal Circuit notes that the claims do NOT:
- specify what screening or how to perform the screening
- explain how to select the tests or what tests
- explain how “time-sharing allocation” should be done
- explain how the expert system works to screen or how apportionment between modules is done
Indeed, “[n]one 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.”
The specification is also deficient in providing any technical details for the HOW. Addressing the specification description of the expert system’s “decision module” making a determination of operator impairment based on operator characteristics that may be measured, the Federal Circuit states, “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.”
Regarding “characteristics that may be measured,” all that is shown is in Fig. 8 and the corresponding specification description thereof:
The expert system interface module 1004 obtains information concerning the equipment operator to determine whether or not the equipment operator has a true impairment. The information concerning the equipment operator can be obtained from measuring a characteristic of the equipment operator, such as a chemical in proximity to the equipment operator, electrical resistance of a portion of skin of the equipment operator, breathing rate of the equipment operator, blood pressure of the equipment operator, blood pulse rate of the equipment operator, blood oxygen level of the equipment operator, electrical conductivity of a portion of skin of the equipment operator, temperature of a portion of skin of the equipment operator, one or more optical characteristics of at least one eye of the equipment operator, optical response to at least one stimulus of at least one eye of the equipment operator, at least one speech characteristic of the equipment operator, comparison of at least one speech characteristic of the equipment operator to a sample speech characteristic of the equipment operator, a speed of dexterity of the equipment operator in performing at least one task, a consistency of dexterity of the equipment operator in performing at least one task, asking the equipment operator to perform some task, such as speaking, interpreting a visual pattern, or physically moving some body part (e.g., hands or fingers).
There is plenty of disclosure of what is measured. But, there is no description of HOW any of these characteristics are measured.
Regarding “how the decision module determines if an operator is impaired based on these measurements,” the specification only states:
The expert system decision module 1002 makes the actual determination of whether or not the equipment operator is impaired and decides which control response to make if there is an impairment.
The specification just states that a determination is made, but no detail is disclosed for HOW the decision module makes the determination of impairment.
Regarding “how the ‘expert system’ effectuates the chosen control response,” the specification only discloses:
Controlling the operation of the equipment can include one or more of the following control responses: disabling the equipment, disabling the equipment after a time delay, temporarily disabling the equipment for a pre-selected time duration, shutting off power to the equipment, limiting the operation of the equipment to a lower speed of operation, limiting the operation of the equipment to allow only the return the equipment to a pre-selected state or a pre-selected location, autonomously moving said equipment to another location, denying entry to the equipment, activating an alarm, sending a warning message to another entity for assistance, issuing a warning message to the impaired equipment operator, and/or requesting another equipment operator replace the impaired equipment operator and then restricting equipment operation if the request is not obeyed within a pre-selected time.
Operation 1512 is next and includes controlling the operation of the equipment if the selective testing of the equipment operator indicates the intoxication of the equipment operator. The controlling operation can include one or more of the control responses listed above. The method ends in operation 1514.
The specification describes what control is effectuated, but not HOW such control is effectuated.
As for the patentee’s argument that “specialized existing equipment modules” (in gas and brake pedals, steering wheel, stereo, navigation, anti-theft, and climate control systems) renders the claims eligible, the Federal Circuit said “markedly absent from the [patent] is any explanation of how the methods at issue can be embedded into these existing modules.” Addressing patentee’s argument that such modules would entail hardware and software different from a generic computer, the Federal Circuit said “the [patent] is completely devoid of any explanation of what these hardware and software differences are, let alone any explanation how to implement them using the existing equipment modules.”
In particular, this is what the specification disclosed regarding embedding claimed functions into existing modules:
In this embodiment, the expert system database module 1000, the expert system decision module 1002, and the expert system interface module 1004 reside within one or more existing equipment module(s) previously listed (e.g., an operations module, an audio module, a navigation module, an anti-theft module, a climate control module, or an equivalent module normally associated with the equipment). For example, in one embodiment the expert system database module 1000, the expert system decision module 1002, and the expert system interface module 1004 all reside within the same existing equipment module chosen from the previous list. In another embodiment the three expert system modules are spread among multiple existing equipment modules. Less cabling and a faster response time are two advantages in locating the expert system database module 1000, the expert system decision module 1002, and the expert system interface module 1004 within the same existing equipment module. However, there may not be enough available processor time and memory in one existing equipment module to support the entire expert system. Furthermore, in one embodiment, the screening module 104 shown in FIG. 1 is actually composed of one or more expert systems for determining different types of equipment operator impairments, and portions of each expert system can be consolidated or distributed among one or more existing equipment module(s) previously listed.
The specification describes various expert system components as residing within one or distributed among multiple existing equipment modules. But, the specification does not detail HOW the claimed functions of various expert system modules are actually embedded in any existing equipment modules.
The specification discloses one embodiment of the expert system being embedded within an existing anti-theft module 600 and shown in Fig. 6, reproduced below.
FIG. 6 illustrates a module diagram of a system to screen an equipment operator by utilizing an anti-theft module of the equipment, in accordance with another embodiment of the invention shown in FIG. 1. The screening module 104 screens the equipment operator 102 for one or more impairments. The screening module 104 utilizes information from the anti-theft module 600 to determine whether the equipment operator 102 is impaired and whether to activate the control module 106. Control module 106 controls the equipment 108, using one or more of the control responses listed above. The anti-theft module 600 in some embodiments includes speech synthesis and/or speech recognition subsystems that can be integrated with little additional cost with the screening module 104 to expand the extent of the screening to include speech communication and speech analysis of the equipment operator 102. The anti-theft module 600 in one embodiment also provides historical information useful for more accurately screening the equipment operator 102 for impairments.
Again, this disclosed embodiment embedding the screening functionality in an anti-theft module still doesn’t describe HOW an existing anti-theft module is modified to include the claimed screening functions.
With all these questions about how things work in this invention, a reader might ask if there is some overlap between §101 and the written description/enablement requirements under §112, first paragraph (pre-AIA). The Federal Circuit does not spell out any link between §101 and §112, first paragraph (pre-AIA) in this case. Perhaps the sufficiency of disclosure for how something works may or may not be enough to satisfy enablement for one of ordinary skill in the art. It depends on the level of ordinary skill in the art, and what one of ordinary skill would understand in reading the specification’s disclosures. Suffice it to say that surviving Alice would benefit from the additional disclosure of technical details for how claimed features work, how claimed features are implemented, and how existing hardware and/or software is modified, especially at the point of novelty and regarding features that relate to the advantages of the invention over the prior art. Especially if the patentee wants to argue DDR and say this invention is rooted in computer technology, how can this be rooted in computer technology when there are no computer-related technical details for distributing the expert systems in existing equipment modules?
Takeaways
- Draft a specification that details the HOW for claimed features (high level generalizations are not enough). This case is an example of the type of technical detail that the Federal Circuit is looking for in the claims and specification to support patent eligibility.
- This is another Federal Circuit decision emphasizing that the total preemption argument is dead.
