Operating in a Networked Environment, without More, Unpatentable Under § 101

Ever since the U.S. Supreme Court issued the 2014 decision in Alice[1], each new decision interpreting patentable subject matter under § 101 has added much needed clarity for patent holders and practitioners alike. On March 28, 2019, the Federal Circuit held that an abstract idea operating in a networked computing environment is unpatentable subject matter under 35 U.S.C. § 101 in ChargePoint, Inc. v. SemaConnect, Inc.[2].

ChargePoint had appealed a district court decision dismissing its complaint for patent infringement against SemaConnect. The complaint was dismissed because the district court held that the claims were not eligible subject matter for patenting under 35 U.S.C. § 101. ChargePoint appealed.

In its arguments, ChargePoint contented that the inventors created improved charging stations that were networked to adjust the amount of electricity delivered in response to on-demand communication.  In response to that argument, the Federal Circuit noted that “nothing in the specification explain[ed] from a technical perspective how that modification occurred.”[3] Therefore, the Federal Circuit agreed with the district court that the ChargePoint patents were merely directed to the abstract idea of communicating over a network. The Federal Circuit distinguished its holding over its 2016 decision in BASCOM,[4] on the basis that BASCOM claimed improved filtering solutions which improved the performance of the computer because the filtering was more dynamic.[5]  In contrast, the court noted, nothing in ChargePoint improved how the charging stations function.[6]

A practical takeaway is that claims for software operating in a networked environment alone (i.e., just including hardware in the claims) is not enough to avoid a finding that the subject matter claimed is abstract.  Applicants need to include a technical explanation of how the software achieves the improvement.

For software patent applications, care should be taken to include details in the specification and figures about how the software is performing in a networked environment, and what improvements are achieved over prior solutions.

[1] Alice Corp. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014).
[2]ChargePoint, Inc. v. SemaConnect, Inc., 2018-1739, 2019 U.S. App. LEXIS 9191 (Fed. Cir. March 28, 2019).
[3]Id., p. 17.
[4]BASCOM Global Internet Services v. AT&T Mobility, 827 F. 3d 1341 (CAFC 2016).
[5]ChargePoint, p. 24.