Chargepoint, Inc. v. Semaconnect, Inc.
920 F.3d 759
| Fed. Cir. | 2019Background
- ChargePoint owns four related patents claiming network‑connected electric‑vehicle charging stations and asserted eight claims against SemaConnect for patent infringement.
- The asserted claims recite charging stations or server methods that communicate with a remote server over a wide area network to enable/modify charge transfer (including demand‑response and payment validation features).
- SemaConnect moved to dismiss under Fed. R. Civ. P. 12(b)(6) on the ground that the claims are ineligible under 35 U.S.C. § 101; the district court granted the motion with prejudice and entered judgment for SemaConnect.
- On appeal, ChargePoint argued the claims recite improvements to charging‑station technology (a “better machine”), present factual allegations supporting an inventive concept, and that the district court erred by not considering submitted declarations and by dismissing with prejudice without addressing amendment.
- The Federal Circuit reviewed de novo under Fourth Circuit Rule 12(b)(6) standards and applied the two‑step Mayo/Alice framework for § 101 eligibility.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether asserted claims are "directed to" patent‑ineligible subject matter under Alice step 1 | Claims improve charging stations by adding network control and thus are directed to a "better machine" rather than an abstract idea | Claims are directed to the abstract idea of network communication to interact with a device (networked control) applied to EV charging | Held: Claims are directed to the abstract idea of communicating over a network to interact with devices (charging stations) |
| Whether claims contain an "inventive concept" at Alice step 2 | The patents allegedly solve technical problems (remote enable/modify charging, demand‑response integration) and ChargePoint pleaded facts showing unconventional solutions | The asserted features are generic networking functions or familiar business concepts (demand response); specification provides no technical improvement; any novelty is the abstract idea itself | Held: No inventive concept; claimed elements are routine/conventional application of networking and business ideas, so claims are ineligible |
| Whether district court erred by refusing to consider ChargePoint’s declarations under Rule 12(d) | Declarations would support factual allegations relevant to step 2 and should have been considered | District court acted within discretion; ChargePoint did not preserve or compel consideration | Held: No error in refusing to rely on those materials in the form presented |
| Whether dismissal with prejudice was improper because amendment wasn't considered | Dismissal prevented ChargePoint from seeking leave to amend; court should have considered amendment or left dismissal without prejudice | ChargePoint never sought leave to amend below, failed to file a proposed amended complaint, and has not shown plausible facts that could cure § 101 defects | Held: No abuse of discretion; dismissal with prejudice was appropriate and ChargePoint has not shown amendment would not be futile |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (articulates two‑step framework for § 101 analysis)
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (applies Mayo; distinguishes abstract idea vs. inventive concept)
- In re TLI Commc’ns LLC, 823 F.3d 607 (Fed. Cir. 2016) (specification may illuminate claim focus; claims directed to abstract concept of recording/administration)
- BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (networking claims held patent‑eligible where they improved prior content‑filtering technology)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (whether elements are well‑understood, routine, conventional is a factual question relevant to step 2)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) (§ 101 may be decided at Rule 12(b)(6) stage but dismissal is improper if factual allegations preclude eligibility determination)