Electric Power Group, LLC v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) is another 35 USC §101 case dealing with patent eligible subject matter. The Court held that the claimed invention was ineligible for patent protection and thus invalid. The patent at issue (US Pat. Nos. 8060259 and 8401710) was directed to systems and methods for performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data and displaying the results.
In Electric Power Group, the Court found that the end result of an idea is not eligible for patent protection. Rather, the particular ways of achieving that end result are patent eligible subject matter. The Court stated that “[i]nquiry therefore must turn to any requirements for how the desired result is achieved.” (Emphasis in original).
On the Internet, a number of articles state that an idea is not eligible for patent protection. Click Can you patent an idea? and General Information Concerning Patents and Can an idea be patented?. These articles are true but may be incomplete in terms of how an inventor may understand the question or answer. The truthfulness of this statement depends on how the term “idea” is defined. Although all inventions are ideas, not all ideas are eligible for patent protection. At a basic level, if a patent application discloses the “idea” of how to achieve an end result, then the specifically disclosed way of achieving that end result is eligible for patent protection. The broad general statement that an idea is not eligible for patent protection is too broad of a statement because it excludes those ideas (i.e. specific ways of how to achieve an end result) that can be patented.
The truthfulness of this statement depends on how the term “idea” is defined.
If by “idea” one means the end result only, then Electric Power Group is clear. The idea of an end result is not eligible for patent protection.
When I speak with inventors, I often use an example of space travel to illustrate which ideas can be patent eligible subject matter and which are not. A person may want to seek patent protection for space travel. However, a claim directed generically to space travel is not eligible for patent protection. This is attempting to seek patent protection for the end result or a generic class of space travel. According to Electric Power Group, this would also be an abstract idea and not patent eligible subject matter under a Section 101 analysis.
But how or the means by which one achieves space travel may be patent eligible subject matter. For example, space travel may require a system for generating breathable oxygen and other systems to recycle carbon dioxide. Space travel may also require a means of propulsion. These systems and mechanisms for space travel are how one achieves the end result: space travel. It is the actual parts, systems, mechanisms and their combinations that support space travel that are eligible for patent protection.
In Electric Power Group, Claim 12 was representative of the claimed invention. Generically, the claimed invention was directed to receiving data from a number of sources, detecting and analyzing such data, displaying the data and deriving a composite indicator of reliability. Based on the Court’s description of the claimed invention, Claim 12 was attempting to secure patent protection for the end result through the recitation of generic steps. The claims recited no unique receiving technique, no unique displaying technique and no unique analyzing technique. Rather, various conventional steps were broadly recited in the claims. The Court found that the claimed invention was directed to the end result, and did not claim how the end result was achieved in any specific detail. Hence, the court invalidated the claims based on 35 USC 101 as being directed to an abstract idea.
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