The Eastern District of Texas Granted a Rule 12(b)(6) Dismissal Because the Asserted Patent Was Directed to the Patent-Ineligible Abstract Idea of Credentialing Visitors and Checking Them In and Out of an Access-Controlled Environment

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A district court in the Eastern District of Texas granted a Rule 12(b)(6) motion to dismiss computer-implemented claims as patent-ineligible abstract ideas under 35 U.S.C. § 101. The Patent is directed to credentialing visitors and checking them in and out of an access-controlled environment, and the court found that the alleged inventive concept was nothing more than applying technology to “a method of accomplishing [a] longstanding human activity.”

Plaintiff Repifi Vendor Logistics, Inc. sued IntelliCentrics, Inc. for infringing U.S. Patent No. 10,304,268 (“the ’268 Patent”). The ’268 Patent “is directed to a method for credentialing visitors to an access-controlled environment by an access administrator.” Specifically, the claimed method streamlines the credentialing and check-in/out processes for visitors to access controlled facilities (like health care facilities and office buildings) through a smart phone app that communicates with an electronic badge.

The court analyzed patent eligibility using the U.S. Supreme Court’s two-step Alice framework. First, a court must determine whether the claims are directed to a patent-ineligible concept, such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If so, the court next considers “whether there are additional elements beyond the patent-ineligible concept that ‘transform the nature of the claim’ into a patent-eligible application.” Id.

Under step one, the court found that the ’268 Patent was directed to an abstract idea. Abstract ideas, which are “products of the mind, mental steps, not capable of being controlled by others,” are unpatentable. Berkheimer v. HP Inc., 890 F.3d 1369, 1375 (Fed. Cir. 2018). In the context of software applications, the balance between patentable concrete ideas and unpatentable abstract ideas typically turns on whether the patent is directed to “an improvement in the functioning of a computer,” which is patentable, or to a method that simply adds “conventional computer components to well-known business practices” or that recites “generalized steps to be performed on a computer using conventional computer activity,” which is unpatentable. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016). The court explained that “[c]redentialing and checking in visitors is a process that long predates the ’268 patent,” and that the patent “clearly delineate[d] a method of accomplishing this longstanding human activity.” In other words, automating a longstanding human activity is an abstract idea.

Next, under step two, the court found that the ’268 Patent does not contain an inventive concept. In Alice, the Supreme Court reasoned that a “patent would need to claim some improvement to how computers carry out a function rather than the mere application of existing computer functions to improve an abstract idea.” Alice, 573 U.S. at 587-88. Under this step, merely making a human process more efficient through conventional technology does not save the patent from being unpatentable. Here, Repifi argued that it supplies an inventive concept through the claimed electronic badge. The two functions of the electronic badge are “(1) its ability to communicate with a smart phone and (2) its ability to change its display in response to the communications from the smart phone.” The court disagreed that the electronic badge was inventive because there were no technological improvements to the electronic badge that enabled it to communicate with a smart phone and change its display. Instead, the patent claims simply recite the use of an electronic badge that is capable of performing those functions. Furthermore, the court explained that the electronic badge referenced is commercially available. In other words, the method claimed in the ’268 Patent merely implemented existing technology (smart phones and electronic badges) to automate a human process. 

The court concluded that the ’268 Patent is directed to an abstract idea, without an inventive concept sufficient to transform it and, therefore, found that it is patent-ineligible under § 101. Accordingly, it granted IntelliCentrics’ motion to dismiss without prejudice.

Practice Tip: When prosecuting computer-implemented patents, patent owners should ensure that the claims recite a technological improvement to the functioning of the computer-based device itself and that the specification describes those improvements.

Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., No. 4:20-CV-448-SDJ (E.D. Tex. Mar. 30, 2021) (Jordan, J.)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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