By: Sunil Chacko, Associate
In Zyrcuits IP LLC v. Acuity Brands, the U.S. District Court for the District of Delaware
invalidated US Patent. No. 6,667,307 under 35 USC §101 for claiming ineligible subject patent matter.
Patent ‘307 is directed to method for sending data over a communication channel. Claim 4 is reproduced below:
A spread-spectrum method improvement for sending data over a communications channel, comprising the steps of:
storing, at a transmitter, N bits of interleaved data as stored data, with N a number of bits in a symbol;
selecting, at said transmitter in response to the N bits of stored data, a chip-sequence signal from a plurality of 2N chip-sequence signals, as an output chip-sequence signal; and
transmitting, at said transmitter, the output chip-sequence signal as a radio wave, at a carrier frequency, over said communications channel, as a spread-spectrum signal.
Relying on the two-step frame work of Alice, the court found ‘307 patent was invalid.
In step one of the Alice analysis the court found that claim 4 of the ‘307 patent was directed to the abstract idea of grouping spread-spectrum data together with a single code instead of parallel codes. The court went on to state the claim 4 was essentially directed to the manipulation of data that required “storing” specified data, “selecting” a signal based on the stored data, and “transmitting” the signal.
In step two of the Alice analysis the court asserted that the claim did not contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. In fact, the court held that claim 4 simply recited an abstract idea that was executed by generic communication technology (i.e., a transmitter). Relying on the Federal Circuit’s reasoning in Cellspin Soft, Inc. v. Fitbit, Inc., the court stated an inventive concepts reflects something more than the application of an abstract idea using well-understood, routine, and conventional activities previously known to the industry.
The court’s decisions in this case serves as a reminder that when drafting claims including an abstract idea, reciting the abstract idea being performed by generic components (e.g., a general purpose processor) will not suffice to transform the abstract idea into patent-eligible subject matter.