The most significant Federal Circuit decision in March was Thales Visionix, Inc. v. United States, another case finding eligible subject matter. What distinguishes this case—and demonstrates the inherently subjective I-know-it-when-I-see-it nature of the Alice test—is the extraordinary breadth of the claims. Consider claim 22, a single-step method claim:
A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.
The court held that this claim was patent eligible, because it was not directed to an abstract idea in Step 1 of the Alice test:
This statement and the focus on the particularity of the claim is at odds with actual claim language and with the way the Alice test is normally applied. The claim says nothing “particular” about the configuration other than one sensor is mounted on the object and one on the moving reference frame. That’s it. No limitation of how mounted, how far or near each other, or they are oriented with respect to each other, or other physical parameters. You could have one sensor mounted on an “object” (e.g. a sensor worn on the wrist of a passenger) in the front compartment of a mile-long train (“moving reference frame”), and the other sensor mounted in the caboose. Indeed, there’s nothing in the claim that even requires the object to be in or on the moving reference frame. So one sensor could be mounted at the train station while the train with the passenger goes by. And talk about abstraction: “moving reference frame.” That’s anything that moves. The court seems to be relying on something more about the arrangement of the sensors than is in the claims themselves, given how they quote Diehr: “This arrangement is analogous to the claims in Diehr, which required the temperature measurement “at a location closely adjacent to the mold cavity in the press during molding.” But Diehr has specific claimed spatial relations–“closely adjacent”– Thales has none. This suggests that the court was implicitly performing claim construction—which generally should happen before patent eligibility, but which the court has repeatedly kicked to the curb as a predicate of the Alice test. Nor is there any limitation on how orientation is determined, other than “based on signals.” There is no limitation on the kinds of signals, or how the determination is done. In other words, this simply claims the result of getting an orientation when you have two sensors, one mounted on some object and one mounted on a moving reference frame. This “claiming the result” and the absence of “how” are precisely the features that the court has used in other cases to find ineligible subject matter—even with claims vastly more specific. Consider Vehicle Intelligence:
With a bit of obvious word substitution, this language applies directly to Thales’ claim. Or consider Electric Power Group, which had an extremely detailed claim. Brushing such details aside, the court stated:
The Electric Power court takes pains to point out that simply determining the results of information gathering (i.e. obtaining signals) is patent ineligible. That’s a direct read on “determining an orientation of an object relative to a moving reference frame based on signals.” How is it that “off-the-shelf” hardware failed to save the claim in Electric Power Group, but was apparently irrelevant in Thales, where the inertial sensors were off-the-shelf as well? The answer is that the Thales court said that the method claim was not abstract because of the “unconventional configuration of sensors.” Wait: the unconventional arrangement analysis is considered in Step 2, not Step 1. That’s what the court held in BASCOM:
And it’s not clear that this even applies to Thales’ method claim, which recites the single step of “determining.” The arrangement of the sensors is only inferentially claimed, as part of the environment itself. In BASCOM the method claim included limitations that actively, not inferentially, performed the filtering operations at the unconventional locations. Putting this all together, the court just as easily could have issued this ruling, and found the claim 22 ineligible:
It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current [the signals are from inertial sensors mounted on an object and a moving reference frame], and the result is the marking or printing intelligible characters, signs, or letters at a distance [determining the orientation of the object based on the signals].
If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance [determining an orientation of an object] by means of the electric or galvanic current [inertial sensors], without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee.
Like the Morse Court, we find claim 22 not warranted in law.
Now, do I believe this is the correct analysis? To be clear I do not (so don’t get any funny ideas about quote mining me). I only elaborate it to demonstrate that while patent eligibility may no longer depend on the “clever draftsman,” it can certainly depend on the clever jurist. I think that the court here saw what it wanted to see: a helmet-mounted display used by jet fighter pilots: rather than actual scope of the claim (almost too simple to draw): The context of Thales’ invention was sufficiently “technological” and distinctive from the court’s everyday experience with computers and software that collect and display information that it colored the court’s perception of the claims and the Alice analysis.