Sponsored post: Telematics patent landscape pre- and post-Alice
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Sponsored post: Telematics patent landscape pre- and post-Alice

John Kirkland and Ha Kung Wong of Fitzpatrick Cella Harper & Scinto discuss how the telematics patent landscape is (or should be) changing

John Kirkland
Wong Ha Kung 120
Ha Kung Wong

The word “telematics” remains a term unfamiliar to many, despite its widespread use thanks to the explosion of mobile computing devices. At its core, telematics refers to the transmission of data using wireless technology. For businesses, telematics is used to enable and to enhance the efficiency of various business functions. For example, in the automobile industry, telematics facilitates everything from managing fleets of vehicles for car rental services, to increasing vehicle safety, assessing driver risk and tailoring insurance policies through collection of contextual vehicle and driver data.

Impact of Alice

The explosion of telematics has come with an explosion of patent estates ostensibly covering the transmission of data for specific purposes.

But the patentability of such inventions could be impacted by the Supreme Court’s 2014 decision in Alice Corp Pty v CLS Bank Int’l, because inventions that arguably can be performed by humans are not patent-eligible subject matter under 35 USC § 101 (134 S Ct 2347, 2354-55 (2014)).

Under Alice, patent-ineligible subject matter is determined in two-steps: the first asks whether the claims, considered in light of the specification, are directed to ineligible subject matter like an abstract idea. If the answer is yes, the second question asks whether the claim contains “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself".

Application of the two-step test has enabled challengers to successfully challenge patents by analogizing claims to common methods for solving old problems (see for example Concaten, Inc v Ameritrak Fleet Solutions, LLC, 131 F Supp 3d 1166, 1172 (D Col 2015)).

In Concaten, claims directed to methods and computer-based systems for providing winter maintenance personnel with specific weather forecast information and treatment recommendations, while allowing for vehicle location and data collection, were found invalid under Alice because they claimed “nothing more than taking steps routinely performed by humans…and applying them on a computer through unexplained ‘processing’ of data".

Recent guidance

Post-Alice, inventors in the telematics space must do more than trace the transmission and processing of data using conventional computers, sensors and devices.

Recent Federal Circuit decisions provide guidance: see Enfish, LLC v Microsoft Corp, 822 F3d 1327, 1335 (Fed Cir 2016); BASCOM Global Internet Servs, Inc v AT&T Mobility LLC, 2016 WL 3514158 at *6 (Fed Cir June 27, 2016); DDR Holdings, LLC v Hotels.com, LP, 773 F3d 1245, 1257 (Fed Cir 2014).

For example, inventions directed to improving the functioning of current telematics technology, or providing non-conventional and non-generic arrangement of known, conventional telematics pieces; or overcoming a problem specifically arising in the realm of telematics may be sufficient to survive Alice

Thus, when contemplating inventions based on telematics, care must be taken to emphasize the “how". How does a telematics-based invention improve or make existing technology more efficient compared to the prior art? How is the invention different from what humans could do or from existing arranged conventional pieces?

Turning back to the Concaten case (which is on appeal), if Ameritrak’s patents had perhaps focused on how the inventions improved functionality of current snow ploughing technology – by including narrowly tailored claims that covered, hypothetically, examples in the specification showing that the claimed technology resulted in the use of less salt compared to conventional processes – the patents might have a better chance to survive.

Now, more than ever, providing a tangible and concrete hook in the specification and incorporating it into the claims is necessary to survive Alice.

more from across site and ros bottom lb

More from across our site

The new head of Phillips Ormonde Fitzpatrick outlines his vision for the firm and explains why D&I measures need constant work
Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Gift this article