215 F. Supp. 3d 499
E.D. Va.2016Background
- ORBCOMM sues CalAmp alleging infringement of five patents covering machine-to-machine platforms for tracking and monitoring fleet vehicles and freight assets (’724, ’686, ’001, ’150, ’626).
- CalAmp moved to dismiss under Fed. R. Civ. P. 12(b)(6) arguing the patents claim abstract ideas and are ineligible under 35 U.S.C. § 101; the court initially denied the motion for all five patents.
- CalAmp filed a Rule 54(b) motion for reconsideration after the Federal Circuit decided Electric Power Group, which invalidated patents directed to collecting, analyzing, and displaying information.
- The court heard briefing and argument and re-evaluated each patent under the Alice two-step framework (Alice step 1: directed to abstract idea; step 2: inventive concept).
- The court granted reconsideration in part: it found the ’626 patent ineligible under § 101 (abstract idea of translation with no inventive concept) and denied reconsideration for the ’724, ’686, ’001, and ’150 patents (found sufficient pleadings to survive § 101 at the Rule 12(b)(6) stage).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ’626 patent claims patent-eligible subject matter under § 101 | The ’626 claims specialized monitoring plus format translation constitute a technological advancement | Claims are directed to abstract translation/format-conversion and use only generic components; Electric Power Group controls | Held ineligible: claims are directed to the abstract idea of translation and lack an inventive concept; invalidated |
| Whether the ’724, ’686, and ’001 patents are § 101 ineligible (remote fleet monitoring) | Patents tie claims to GPS/satellite machines and specific arrangements that impose meaningful limits and represent inventive concepts | Claims are like Electric Power Group—collect/analyze/display information and thus abstract | Denied: at Rule 12(b)(6) stage, claims plausibly tied to specific machines (GPS/satellite) and nonconventional arrangements; survive § 101 challenge for now |
| Whether the ’150 patent (engine run time via alternator frequency) is § 101 ineligible | Using alternator frequency to measure run time is an innovative, nonconventional application of known hardware | Defendant says it merely correlates data (an abstract idea) without inventive concept | Denied: pleadings show a nonconventional use of known machine (alternator frequency) giving an inventive concept at this stage |
| Proper standard/procedure for reconsideration of interlocutory denial of 12(b)(6) | N/A | N/A | Court applied Rule 54(b) authority to reconsider interlocutory orders and measured reconsideration against intervening controlling authority (Electric Power Group) and whether prior ruling was clearly erroneous |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (articulated the two-step test for patent-eligibility under § 101)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (explained the search for an "inventive concept" at Alice step two)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (held claims to collecting, analyzing, and displaying information are directed to ineligible abstract ideas)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (inventive concept may exist where claimed solution is rooted in computer technology to solve a computer-centric problem)
- BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (inventive concept can arise from a non-conventional arrangement of known elements)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (§ 101 determinations at Rule 12(b)(6) stage require understanding the basic character of claimed subject matter)
- Bilski v. Kappos, 561 U.S. 593 (2010) (limitations on using a particular environment do not by themselves confer patent-eligibility; machine-or-transformation test is informative)
- SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010) (use of a specific machine can impose meaningful claim limits relevant to § 101 analysis)
- Diamond v. Diehr, 450 U.S. 175 (1981) (application of an abstract idea to a new and useful end can be patent-eligible)
- Gottschalk v. Benson, 409 U.S. 63 (1972) (information and fundamental algorithms may be unpatentable abstract ideas)