Ericsson Inc. v. Tcl Communication Technology
955 F.3d 1317
| Fed. Cir. | 2020Background
- Ericsson sued TCL for patent infringement; after IPRs narrowed the dispute, only U.S. Patent No. 7,149,510 (the ’510 patent) remained at trial (claims 1 and 5 were asserted).
- The ’510 patent claims a system/method for controlling access to a software platform (an access controller with an interception module and a decision/security access manager).
- The district court denied TCL’s pre‑trial summary judgment motion under 35 U.S.C. § 101 (concluding the claims were not directed to an abstract idea), and the case proceeded to jury verdict in Ericsson’s favor on infringement, damages, and willfulness.
- TCL appealed the § 101 ruling and post‑trial rulings; Ericsson argued TCL waived § 101 by failing to raise it via Rule 50 motions.
- The Federal Circuit reversed: it held claims 1 and 5 ineligible under § 101 (abstract idea + no inventive concept), vacated the damages verdict, and did not reach willfulness or further damages issues.
Issues
| Issue | Plaintiff's Argument (Ericsson) | Defendant's Argument (TCL) | Held |
|---|---|---|---|
| Preservation/waiver of §101 appeal | TCL waived §101 by not renewing a Rule 50 motion post‑trial | District court’s pre‑trial §101 ruling effectively granted summary judgment to Ericsson and preserved the issue; court may reach waived issues in its discretion | CAFC: TCL did not waive; the court could review (district court’s pre‑trial ruling left nothing for the jury on step‑one legal question; appellate review appropriate) |
| Alice Step 1 — directed to an abstract idea? | Claims are a technological solution (layered architecture for mobile phones) and thus not an abstract idea | Claims recite only the abstract concept of controlling/limiting access to resources (receive request → decide → grant/deny) | CAFC: Claims are directed to the abstract idea of controlling access to resources |
| Alice Step 2 — inventive concept? | The claimed layered/mobile architecture and interception scheme supply an inventive concept (improvement over prior art) | Claims lack specific technical implementation; limitations are generic computer components and do not add an inventive concept | CAFC: No inventive concept; asserted architecture is described in the spec but not claimed, so claims amount to a generic computer implementation of an abstract idea |
| Effect of PTAB IPR decision / estoppel | PTAB’s IPR finding (lack of motivation to combine prior art) supports that claims recite an inventive, technological improvement | PTAB findings cannot supply inventive concept when the claimed language does not recite those features | CAFC: PTAB’s conclusions do not demonstrate an inventive concept for the §101 analysis because the allegedly novel features are not present in claims 1 or 5; §101 invalidity affirmed |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (framework for evaluating patent eligibility and concept of an "inventive concept")
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (two‑step §101 test for abstract ideas and inventive concept)
- Bilski v. Kappos, 561 U.S. 593 (2010) (rejection of categorical rules; broad characterization of abstract ideas)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (focus on whether claims improve computer functionality or are directed to an abstract idea)
- Electric Power Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (analyzing the claim’s focus to determine abstractness)
- In re TLI Commc’ns, 823 F.3d 607 (Fed. Cir. 2016) (claims directed to abstract idea where additional components provide only generic environment)
- ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019) (specification cannot be used to import unclaimed details into claims for §101 analysis)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (patent‑eligibility can involve underlying factual questions)
- Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329 (Fed. Cir. 2015) (denial of summary judgment that effectively grants judgment to non‑movant may be appealable)
- Feld Motor Sports, Inc. v. Traxxas, L.P., 861 F.3d 591 (5th Cir. 2017) (procedural rule that Rule 50 preservation may be required for review after a jury trial)