Neochloris, Inc. v. Emerson Process Management Power & Water Solutions, Inc. et al
Filing
43
MEMORANDUM Opinion and Order signed by the Honorable Edmond E. Chang. For the reasons stated in the Opinion, the defense motion for summary judgment 34 is granted: Patent Number 6,845,336 is declared invalid under 35 U.S.C. 101. A separate AO-450 judgment shall be entered. Civil case terminated. Status hearing of 10/27/2015 is vacated. Emailed notice(slb, )
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
NEOCHLORIS, INC.,
)
)
Plaintiff,
)
)
v.
)
)
EMERSON PROCESS MANAGEMENT LLLP and )
CITGO PETROLEUM CORPORATION,
)
)
Defendants.
)
)
)
No. 14 C 9680
Judge Edmond E. Chang
MEMORANDUM OPINION AND ORDER
I. Introduction
Plaintiff Neochloris owns patent number 6,845,336 (the ’336 patent) for a
“Water Treatment Watering System” and brings this infringement action against
Defendants
Emerson
Process
Management
LLLP
and
CITGO
Petroleum
Corporation.1 Defendants jointly moved for summary judgment, arguing that the
’336 patent is invalid because it covers non-patentable subject matter under 35
U.S.C. § 101. For the reasons discussed below, Defendants’ motion for summary
judgment is granted because the ’336 patent protects an abstract idea that is not
patentable under Section 101.
1The
Court has subject matter jurisdiction over this patent action under 28 U.S.C.
§§ 1331, 1338(a). Citations to the record are noted as “R.” followed by the docket number
and the page or paragraph number.
II. Background
Neochloris is an Illinois corporation that “develop[s] environmental
technologies for public health, homeland security, and environmental protection
applications.” R. 36, Pl.’s Resp. at 1. Neochloris owns the ’336 patent, which covers a
water treatment monitoring system that measures water quality, sends data
through a computer network, and alarms users when certain events are triggered.
R. 35-3, Defs.’ Br., Exh. A, ’336 Patent. On January 6, 2015, Neochloris alleged that
Emerson and CITGO (Emerson’s customer) were infringing “at least claims 13 and
17” of the ’336 patent by using Delta V, Emerson’s systems-monitoring technology.
R. 18, Pl.’s Am. Compl. ¶¶ 3-24, 27. Neochloris claimed that Emerson indirectly
infringed the ’336 patent by inducing Delta V users (such as CITGO) to infringe the
patent and that Emerson also contributorily infringed by “instructing, aiding,
assisting, authorizing, advertising, marketing, promoting, providing and/or
encouraging the … sale and use of the Delta V system.” Id. ¶¶ 25-31. Neochloris
also alleged that CITGO directly infringed the ’336 patent by using the Delta V
system across the United States, including at its refinery in Lemont, Illinois. Id. ¶¶
32-35. During a status hearing, the parties jointly requested a stay of discovery to
permit Defendants to file a summary judgment motion on invalidity under Section
101. R. 33, Minute Entry dated 2/18/15. The Court granted the request, id., and
Defendants filed this joint motion for summary judgment.
2
A. The ’336 Patent
The Patent and Trademark Office issued the ’336 patent to inventors Prasad
Kodukula and Charles Stack in 2005. ’336 Patent. The ’336 patent describes a
system of monitoring water quality at water treatment plants. Id. Sensors collect
information such as water temperature, pH levels, flow rates, carbon dioxide
concentrations, and pollution levels. Id. 3:23-30. This information is then sent to a
remote monitoring facility through an internet connection or “broadband
communication uplink.” Id. 3:14-19. The monitoring system reviews the data and
sends an alert when there is a “process failure” or when the data falls outside of a
preselected range. Id. 4:37-43.
Neochloris alleges infringement of “at least claims 13 and 17” of the patent.
Pl.’s Am. Compl. ¶ 27. Claim 13 describes the process for monitoring the water and
sending out alarms:
13. A process for real-time monitoring of a water treatment facility
comprising the steps of:
a) collecting operational data from said facility;
b) providing a monitoring computer at a remote location from
the facility;
c) transferring said data over internet communication lines to
the computer;
d) providing software with the monitoring computer to operably
analyze the data and to detect ongoing and predict future waste water
treatment process failure events; and
e) sending an alarm signal from the monitoring computer to the
facility to provide warning of the process failure events.
3
’336 Patent 13:3-17. Claim 17 outlines a similar process, but adds a hierarchal
alarm system:
17. A process for real-time monitoring of a water treatment facility
comprising the steps of:
a) collecting operational data from said facility;
b) providing a monitoring computer at a remote location from
the facility;
c) transferring said data over communication lines to the
computer;
d) providing software with the computer to operably analyze the
data and predict waste water treatment process upsets and process
failure events; and
e) sending a hierarchal alarm signal from the computer to the
facility to provide warning of the process upsets and failure events;
said alarm signal having a first hierarchy alarm that is sent to a first
party in response to an upset or event having a lower degree of severity
and a second hierarchy alarm that is sent to a second party in response
to an upset or event having a higher severity.
Id. 13:38-56. All in all, these claims describe a method for (1) collecting data at a
water treatment plant; (2) sending the data over an internet connection to a
computer; (3) monitoring and analyzing the data with an ordinary computer and
software; and (4) alerting the facility of any abnormalities.
III. Standard of Review
Summary judgment must be granted “if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a). A genuine issue of material fact exists if “the
evidence is such that a reasonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In evaluating
4
summary judgment motions, courts must view the facts and draw reasonable
inferences in the light most favorable to the non-moving party. Scott v. Harris, 550
U.S. 372, 378 (2007). The Court may not weigh conflicting evidence or make
credibility determinations, Omnicare, Inc. v. UnitedHealth Grp., Inc., 629 F.3d 697,
704 (7th Cir. 2011), and must consider only evidence that can “be presented in a
form that would be admissible in evidence.” Fed. R. Civ. P. 56(c)(2). The party
seeking summary judgment has the initial burden of showing that there is no
genuine dispute and that she is entitled to judgment as a matter of law. Carmichael
v. Village of Palatine, 605 F.3d 451, 460 (7th Cir. 2010); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986); Wheeler v. Lawson, 539 F.3d 629, 634 (7th Cir.
2008). If this burden is met, the adverse party must then “set forth specific facts
showing that there is a genuine issue for trial.” Anderson, 477 U.S. at 256. In
deciding Defendants’ motion for summary judgment, the Court views the evidence
in the light most favorable to the non-moving party. See Matsushita Elec. Indus. Co.
v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
In addition, Section 101 validity is a question of law.2 See, e.g., Celsis In
Vitro, Inc. v. CellzDirect, Inc., 83 F. Supp. 3d 774, 777 (N.D. Ill. 2015) (citing Fort
Properties, Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1320 (Fed. Cir. 2012)).
Courts may resolve the question of patent eligibility under Section 101 in a
summary judgment motion before addressing claim construction. See, e.g., Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed.
2The
parties’ disputed facts, R. 37, 39, do not affect the invalidity analysis, as it is the
claims of the ’336 patent that are material in deciding this summary judgment motion.
5
Cir. 2012) (“Claim construction is not an inviolable prerequisite to a validity
determination under § 101.”); Mkt. Track, LLC v. Efficient Collaborative Retail
Mktg., LLC, 2015 WL 3637740, at *2 (N.D. Ill. June 11, 2015) (“claim construction is
not necessary if the asserted claims, read most favorably to the patent holder, still
recite an abstract idea.”).
Most courts have also required the movant to prove invalidity by clear and
convincing evidence because patents are afforded a presumption of validity. See,
e.g., Ameritox, Ltd. v. Millennium Health, LLC, 2015 WL 728501, at *14 (W.D. Wis.
Feb. 19, 2015) (citing Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242
(2011)). But at least one court in this circuit has questioned this presumption at the
Section 101 stage, Celsis In Vitro, 83 F. Supp. 3d at 777, based on a recent Federal
Circuit concurrence: “The [Patent and Trademark Office] has for many years
applied an insufficiently rigorous subject matter eligibility standard, [so] no
presumption of eligibility should attach when assessing whether claims meet the
demands of 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 720-21 (Fed. Cir.
2014) (Mayer, J., concurring). See also Wireless Media Innovations, LLC v. Maher
Terminals, LLC, 2015 WL 1810378, at *5 (D.N.J. Apr. 20, 2015) (the Supreme Court
“has never mentioned—much less applied—any presumption of eligibility” in the
Section 101 context, so no presumption applies). But because Defendants meet the
clear and convincing evidence standard, the Court need not decide the standard-ofproof issue. See Celsis In Vitro, 83 F. Supp. 3d at 777.
6
IV. Analysis
A. Standard for Patentability and the Alice Framework
The Patent Act describes the scope of patentable material: “Whoever invents
or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent
therefor[.]” 35 U.S.C. § 101. But it is fundamental that “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Association for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (citation and
quotations omitted). Because they are the “basic tools of scientific and technological
work …[,] monopolization of those tools through the grant of a patent might tend to
impede innovation more than it would tend to promote it.” Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (citation and
quotations omitted). See also Bilski v. Kappos, 561 U.S. 593, 606 (2010) (courts must
“strik[e] the balance between protecting inventors and not granting monopolies over
procedures that others would discover by independent, creative application of
general principles.”).
At the same time, the Supreme Court has recognized that because “all
inventions at some level embody, use, reflect, rest upon, or apply … abstract ideas,”
this exclusionary principle cannot be so broad as to make something un-patentable
simply because it involves, at some level, an abstract concept. Mayo, 132 S. Ct. at
1293 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1981)). So long as the concept has
been applied to “a new and useful end,” transforming the abstract idea into an
7
actual invention, the result may be eligible subject matter for patent protection.
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations omitted).
In Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme
Court refined the two-step analysis for determining whether material is patentable
under Section 101. First, the reviewing court asks if the claims in question are
“directed to a patent-ineligible concept” on their face. Id. at 2355. If so, the court
then must ascertain if the claims nonetheless contain an “inventive concept” that
can “transform th[e] abstract idea into a patent-eligible invention.” Id. at 2357. The
court “consider[s] the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the nature of
the claim’ into a patent-eligible application.” Id. at 2355 (citing Mayo, 132 S. Ct. at
1297). At its heart, the question boils down to whether the patent-seeker claims
ownership over a basic “building block of human ingenuity,” rather than a creation
that “integrate[s] the building blocks into something more.” Id. at 2354 (citation and
quotations omitted).
B. The ’336 Patent Covers an Abstract Idea
Defendants argue that the ’336 patent is invalid because it describes the
patent-ineligible abstract idea of “monitoring [a process], processing results and
reporting selected results.” Defs.’ Br. at 10. As discussed next, the Court agrees that
the ’336 patent does not satisfy subject matter eligibility under the Alice framework.
As an initial matter, for the purposes of a Section 101 challenge, courts may
look to claims that are representative of the patent when the patent’s claims are
8
“substantially similar and linked to the same abstract idea.” Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir.
2014); see also Alice, 134 S. Ct. at 2359-60. So “addressing each claim of the asserted
patents [is] unnecessary.” Id. The parties focus on two claims—13 and 17—and do
not dispute that these are representative claims of the ’336 patent. See Defs.’ Br. at
10; Pl.’s Resp. at 3. Claims 13 and 17 describe the process of collecting data at a
water treatment plant, transmitting the data to the computer, using a computer
and software to monitor the data, and sending alarms when there are potential
problems. Defendants argue that humans have, for some time, monitored processes
“with a means of communication (telephone, cell phone, 2-way radio) and a pencil
and paper.” Defs.’ Br. at 19.
The Court agrees that, at bottom, the claims cover the general process of
observing, analyzing, monitoring, and alerting that can be done entirely by the
human mind and by using pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“methods which can be
performed entirely in the human mind are the types of methods that embody the
‘basic tools of scientific and technological work’ that are free to all men and reserved
exclusively to none.”) (emphasis in original) (citation omitted). Although the
Supreme Court has not “delimit[ed] the precise contours of the ‘abstract ideas’
category,” the Federal Circuit has determined that collecting and processing data is
an abstract idea. Content Extraction, 776 F.3d at 1347 (a patent for reading and
processing the data on checks involved the abstract idea of “data collection,
9
recognition, and storage,” a process that “is undisputedly well-known. Indeed,
humans have always performed these functions.”). Similarly, courts have also
invalidated patents that claimed nothing more than merely monitoring a process.
See, e.g., IPLearn-Focus, LLC v. Microsoft Corp., 2015 WL 4192092, at *1 (N.D. Cal.
July 10, 2015) (using a computer and sensors to monitor a student’s concentration
levels and analyze changes was an abstract idea); Wireless Media Innovations, 2015
WL 1810378, at *8 (“Patents are directed to the same abstract idea: monitoring
locations, movement, and load status of shipping containers within a containerreceiving yard, and storing, reporting and communicating this information in
various forms through generic computer functions.”); Hewlett Packard Co. v.
ServiceNow, Inc., 2015 WL 1133244, at *7 (N.D. Cal. Mar. 10, 2015) (a system that
monitored service tickets and alerted help desk users “[did] nothing more than
recite the abstract idea of monitoring deadlines and alerting users about upcoming
deadlines, along with an instruction to implement the idea on various computing
components”); Joao Bock Transaction Sys., LLC v. Jack Henry & Associates, Inc., 76
F. Supp. 3d 513, 516 (D. Del. 2014) (patent allowing cardholder to monitor credit
card transaction activity, make predetermined limitations on transactions, and
accept or deny a transaction based on those restrictions covered an abstract idea).3
3Neochloris
cites Helios Software, LLC v. SpectorSoft Corp., 2014 WL 4796111, at *17 (D.
Del. Sept. 18, 2014), where the district court refrained from deeming an internet-activity
monitoring system as an abstract idea. Pl.’s Resp. at 8. But that opinion is not persuasive
here because the defendant there “ma[de] no effort to show that these ideas are
fundamental truths or fundamental principles the patenting of which would pre-empt the
use of basic tools of scientific and technological work.” Id. The district court acknowledged
that “remotely monitoring data” could be abstract, but the court did not invalidate the
patent because the defendant offered no support for its position. Id. Unlike SpectorSoft,
10
Neochloris does not refute that a system of observing, analyzing, monitoring,
and alerting is an abstract idea. Instead, Neochloris counters that Defendants (1)
“simplified” the claim language and ignored limiting language in the claims; and (2)
failed to provide adequate historical and evidentiary support that the patent
involves a fundamental or long-standing human practice.
Neochloris first argues that Defendants failed to consider the ’336 patent’s
claim limitations, including the system’s use of hardware and software to predict
future events. Pl.’s Resp. at 3-4; 7-8. But even with those limitations, the claims still
only describe the abstract idea of collecting data, monitoring the data, processing
results, and alerting the user of the results. In any event, any claim limitations,
inventive concepts, or “novelty in implementation of the idea [are] [] factor[s] to be
considered only in the second step of the Alice analysis.” Ultramercial, 772 F.3d at
715 (explaining that step two involves “examin[ing] the limitations of the claims” to
find an inventive concept). As explained in detail below, Neochloris’s asserted
limitations do not add anything concrete to the claim such that the abstract idea
becomes patentable. See infra Section IV(C).
The Court discerns Neochloris’s second argument to be that Defendants have
not met their burden because they have not cited to historical evidence or academic
literature showing that the process of observing, analyzing, monitoring, and
alerting is a long-standing human practice. Pl.’s Resp. at 8. This argument is
unpersuasive. Although historical prevalence of a purported invention may help
Defendants here have presented arguments and evidence to show why they are entitled to
judgment.
11
guide a court’s analysis, see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (citing a 1927 article on suretyship), it is not required in the Alice
framework. Indeed, a court’s role is not to determine how many centuries humans
have engaged in a certain practice, but to determine whether a patent involves an
idea, concept, or principle. Alice, 134 S. Ct. at 2355. So, although some cases do rely
on historical evidence on the way to invalidating a patent as subject-ineligible, not
surprisingly, many do not. See, e.g., Ultramercial, 772 F.3d at 714 (abstract idea of
viewing an advertisement before accessing content was not patentable).
C. The Patent Does Not Have an Inventive Concept
In the second step of the analysis, courts will “consider the limitations of each
claim both individually and as an ordered combination to determine whether the
additional limitations transform the claim into a patent-eligible application of a
patent-ineligible concept.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1332 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2355). To be patentable, the claims
must include “additional features to ensure that [it] is more than a drafting effort
designed to monopolize [the abstract idea].” Alice, 134 S. Ct. at 23570 (citing Mayo,
132 S. Ct. at 1297) (quotations omitted). It is insufficient, for example, to state the
abstract idea and add “apply it.” Id. (citation omitted). As previously discussed,
Neochloris argues that three inventive features transform the monitoring concept
into a patent-eligible application, namely, the system’s (1) use of computers and
software; (2) ability to predict future failure events; and (3) ability to reduce human
12
error. Pl.’s Resp. at 9-10. None of these limitations make the abstract idea patenteligible.
1. Use of Computers and Software
Neochloris first argues that the ’336 patent is salvageable because “the
claims are tied to a monitoring computer with software to operably analyze the data
and to detect ongoing and predict future waste water treatment process upsets and
process failure events.” Pl.’s Resp. at 10 (quotations omitted) (citing Claim 13).
Neochloris further asserts that “a computer is integral to the claimed invention.” Id.
To determine whether there is an inventive concept, “[t]he relevant question is
whether the claims here do more than simply instruct the practitioner to implement
the abstract idea … on a generic computer.” Alice, 134 S. Ct. at 2359. As in Alice,
the claims here do not.
An abstract idea is not transformed by the addition of a computer when “the
function performed by the computer at each step of the process is purely
conventional.” Id. (quotations omitted) (citing Mayo, 132 S. Ct. at 1299). “At its most
basic … a computer is an automatic electronic device for performing mathematical
or logical operations” involving the monitoring and processing of data. Bancorp
Servs., 687 F.3d at 1277 (citation and quotations omitted). For example, in Content
Extraction, the Federal Circuit rejected the patent owner’s argument that using a
scanner and computer to extract and store data from a check was an inventive
concept. 776 F.3d at 1348-49. Because these were “well-known, routine, and
conventional functions of scanners and computers,” these limitations did not save
13
the plaintiff’s abstract idea. Id.; see also, e.g., Bancorp Servs., 687 F.3d at 1278 (“the
use of a computer in an otherwise patent-ineligible process for no more than its
most basic function—making calculations or computations—fails to circumvent the
prohibition against patenting abstract ideas and mental processes.”).
Similarly, here, the ’336 patent employs any “monitoring computer” and any
“software” to perform basic computer functions. The computer and software simply
make routine calculations to monitor and analyze water data. The claims are not
limited to any particular software or hardware, and this generic technology has no
special capabilities that “improve the functioning of the computer itself” or “effect
an improvement in any other technology or technical field.” Alice, 134 S. Ct. at
2359. Because the addition of a computer and software in the ’336 patent “does no
more than require a generic computer to perform generic computer functions,” id. at
2359, this generic technology does not save the ’336 patent.
Neochloris counters that the computer and software perform more than
generic functions because the technology “us[es] highly sophisticated techniques
such as encryption/decryption of data, artificial neural networks, expert systems,
optimization, pattern recognition, search functions, and advanced statistical
functions.” Pl.’s Resp. at 3-4 (citing ’336 Patent 9:4-9). But Neochloris cites the claim
specification rather than the limitations in the claims themselves. Claims 13 and 17
only refer to any “computer” and “software,” and “the important inquiry for a § 101
analysis is to look to the claim.” Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (emphasis added). In Accenture,
14
“[a]lthough the specification of the [disputed] patent contains very detailed software
implementation guidelines, the system claims themselves only contain generalized
software components arranged to implement an abstract concept on a computer.”
Id. And “the complexity of the implementing software or the level of detail in the
specification does not transform a claim reciting only an abstract concept into a
patent-eligible system or method.” Id. To be sure, a patent’s specification can
provide context and thus help illuminate the meaning of a term in a claim, but that
is not Neochloris’s proposed use for the specification. To add the detailed
explanation into the claims would do much more than provide context for a disputed
meaning of a term—it would instead rewrite the claims.
Even though Neochloris does not direct the Court’s attention to any other
claims, the Court recognizes that some of the other claims include limitations
mentioned in the specifications. For example, Claim 19 of the ’336 patent includes
software with “an artificial neural network module,” a “search module,” a
“statistical module,” and the ability to “locate common patterns.” ’336 Patent 13:6114:50. Claim 24 also states that the computer “optimize[s] operation of the facility.”
Id. 16:4. As previously explained, Neochloris could have disputed that Claims 13
and 17 represent the patent as a whole. But it did not, choosing instead to focus on
these two claims. See Content Extraction, 776 F.3d at 1348 (plaintiff “never asserted
in its opposition … that the district court should have differentiated any claim from
those identified as representative … , [n]or did [it] identify any other claims as
purportedly containing an inventive concept.”). Even if the Court were to consider
15
these limitations, however, it would still conclude that they are no more than
elaborate descriptions of rudimentary computer functions. Neochloris provides no
explanation or citation as to why these advanced functions are inventive. Indeed, it
is not even clear what “an artificial neural network module” refers to besides a
central processing unit—a basic computer’s brain. And nowhere does Neochloris
assert that it invented an interface that optimizes water management or created a
new form of searching, statistical analysis, pattern recognition, or data encryption.
See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (plaintiff argued that its “interactive interface” had the special
ability to tailor information to the user, but the software was simply the “brains of
the outfit,” or a “generic web server with attendant software, tasked with providing
web pages to and communicating with the user’s computer”) (citation and
quotations omitted). Thus, Claims 13 and 17, which are representative of the patent
as a whole, involve only generic computer functions. The additional “sophisticated
techniques” do not add an inventive concept.4
4Neochloris’s
citation to the machine or transformation test, Pl.’s Resp. at 9-10, is
inapposite. This test is not dispositive because “the Supreme Court emphasized that
satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse an otherwise
ineligible claim with an ‘inventive concept.’” DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at 1301). Even without delving
into the test, it is unlikely that Neochloris would meet the standard it cited—that “the
addition of a machine must play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for permitting a solution to
be achieved more quickly.” Pl.’s Resp. at 9-10 (citing Walker Digital, LLC v. Google, Inc., 66
F. Supp. 3d 501, 506 (D. Del. 2014)).
16
2. Ability to Predict Future Events and Reduce Human Error
Neochloris also argues that the ability “to predict upsets that a human
operator may overlook” on “a real time basis” is sufficiently inventive. Pl.’s Resp. at
4, 10. This limitation is included in Claims 13 (the “real-time monitoring” system
“predict[s] future waste water treatment process failure events”) and 17 (the “realtime monitoring” system “predict[s] waste water treatment process upsets and
process failure events”). These abilities, Neochloris offers, also reduce human error.
Id. at 11. Once again, however, none of these limitations go beyond the basic
functioning of a computer, and Neochloris does not cite any case law to that effect.
There is no inventive concept when a computer just replicates what a person can do,
only more quickly and accurately. A computer can more quickly and accurately
solve the various forms of Bernoulli’s equation,5 but using a computer to that does
not add an inventive concept to the fundamental truth of that mathematical
equation.
As to predictive ability, the Federal Circuit recently upheld a patent’s
invalidity even though it involved predicting a customer’s preferences. OIP Tech.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361 (Fed. Cir. 2015). The patent covered
“a price-optimization method that help[ed] vendors automatically reach better
pricing decisions through automatic estimation and measurement of actual demand
to select prices.” Id. (citation omitted). The patent helped sellers set prices by
gathering statistics about consumers, using that data to project a demand curve,
5For
example, pt = ps + ½ρv2 (where pt = total pressure; ps = static pressure; ρ = fluid
density; and v = velocity of fluid).
17
and choosing a new price for a product. Id. at 1361. But the court concluded that
“[a]t best, the claims describe the automation of the fundamental economic concept
of offer-based price optimization through the use of generic-computer functions.” Id.
at 1363. The key inventive feature was the automation of traditional methods of
price optimization, and that still was not enough to make it patent-eligible. Id.
Nor is the ability to predict in real-time an inventive concept. In another
persuasively reasoned opinion, a district court held that predicting what a customer
wanted to buy—or “offering something to a customer based on his or her interest in
something else”—was a “marketing technique as old as the field itself.” Tuxis Tech.,
LLC v. Amazon.com, Inc., 2014 WL 4382446, at *3 (D. Del. Sept. 3, 2014). And “that
the upsell item can be recommended in real time using a computer does not save
the claim because the computer must be integral and facilitate the process in a way
that a person making calculations or computations could not.” Id. at *5. Although
humans cannot predict customer preferences as quickly as a computer, the
computer was not integral because it “performs nothing more than purely
conventional steps that are well-understood, routine, and previously known to the
industry.” Id. (citing Alice, 134 S. Ct. at 2359).
Similarly, in this case, the monitoring system’s ability to predict failures in
real time is not sufficiently inventive to save the ’336 patent. Like the patents in
OIP and Tuxis, the ’336 system automates a computational process that a person
could do with pen and paper—for example, “a human could readily measure the pH
of water every hour and note an increasing or decreasing trend that would predict
18
that the water may breach a safe pH range in the near future.” R. 38, Defs.’ Reply
at 10-11. Though perhaps true, it is irrelevant that “it would not be humanly
possible for one to physically examine data from multiple sensors as well as
historical data and predict future waste water treatment process upsets and process
failure events on a real time basis.” Pl.’s Resp. at 10. This is because “relying on a
computer to perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP, 788 F.3d at 1363.
Finally, Neochloris makes the related argument that the ’336 system is
inventive because it detects events that “may be overlooked by a human operator.
Moreover, it was the inventors’ stated goal to avoid human intervention in
analyzing and alarming to guard against operator error or misconduct.” Pl.’s Resp.
at 1. But again, this limitation only describes the generic ability of a computer to
work more accurately and does not make the claim inventive. See, e.g., OIP, 788
F.3d at 1363 (discussed above); CertusView Technologies, LLC v. S & N Locating
Servs., LLC, 2015 WL 269427, at *20 (E.D. Va. Jan. 21, 2015) (“[u]ndoubtedly, the
use of a photographic image reduces the effect of human error,” but “it is hardly
transformative to recite the use of a more accurate photographic image” as an
inventive concept, when the photograph simply replaced “the hand-made sketch or
drawing” conventionally used to excavate land).
In sum, none of the ’336 patent’s limitations—the use of computers and
software, the predictive abilities, or the ability to reduce error—constitute a
sufficiently inventive concept to warrant patent protection.
19
V. Conclusion
For the reasons given above, Defendants’ motion for summary judgment [34]
on the invalidity of the ’336 patent is granted. Judgment will be entered against
Neochloris’s claims as to both Defendants and in favor of Defendants’ counterclaim
for a declaration of invalidity. The status hearing of October 27, 2015 is vacated.
ENTERED:
s/Edmond E. Chang
Honorable Edmond E. Chang
United States District Judge
DATE: October 13, 2015
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