Thales Visionix Inc. v. United States: A Mathematical Equation Does Not Necessarily Doom Claims
On Wednesday, March 8, 2017, the Federal Circuit published its decision in Thales Visionix Inc. v. United States, No. 1:14-cv-00513-TCW, (Mar. 8, 2017) concerning infringement of U.S. Patent No. 6,474,159. Thales Visionix appealed from the US Court of Federal Claims judgment holding that the claims were directed to patent-ineligible subject matter. The Federal Circuit reversed the Claims Court's decision and remanded for further proceedings.
Plaintiff Thales Visionix, Inc. ("TVI") sued the government, asserting that the helmet-mounted display systems (HMDS) in the F-35 Joint Strike Fighter infringed the claims of U.S. Patent No. 6,474,159, directed to motion-tracking relative to a moving platform.
The Court of Federal Claims applied the two-step Alice test. First, the court determined whether the claims were directed to an abstract idea and in doing so, the court held that even though the independent claims included "a system of generic inertial sensors and a receiving element," the claims were "directed to mathematical equations for determining the relative position of a moving object to a moving reference frame." Thus, the claims were directed to the abstract idea of "tracking two moving objects and incorporating laws of nature governing motion, both of which are ineligible for patent protection."
The lower court also determined that the claims failed the second step of the Alice test, whether the claims include an inventive concept that would "transform [the] abstract idea into a patent-eligible invention." The court reasoned that by using generic sensors, the court determined that the claims did not transform the abstract nature of the navigation equations into a patent-eligible invention.
The Federal Circuit reversed the lower court's decision, finding the facts of the case analogous to Diamond v. Diehr, where the Supreme Court confirmed the eligibility of patent claims despite the inclusion of a mathematical formula in a claimed method for molding raw, uncured rubber into cured rubber products. 450 U.S. 175, 177 (1981). The Supreme Court held that claims are patent eligible under § 101 "when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect." Id. at 192.
The Federal Circuit reasoned that while the '159 claims use mathematical equations to determine the orientation of the object relative to the moving reference frame, the equations--dictated by the placement of the inertial sensors and application of laws of physics--served only to tabulate the position and orientation information in this configuration. The court held the sensor arrangement analogous to the claims in Diehr, which required the temperature measurement "at a location closely adjacent to the mold cavity in the press during molding." Diehr, 450 U.S. at 179. Just as the claims in Diehr reduced the likelihood that the rubber molding process would result in "overcuring" or "undercuring," the '159 claims result in a system that reduces errors in an inertial system that tracks an object on a moving platform.
The Federal Circuit's decision is important in the continuing saga of Alice. Patent examiners are reluctant to issue software claims or claims with a mathematical formula - issuing knee jerk §101 rejections without fully analyzing the disclosure. Defendants are apparently also using Alice as a tool in defending lawsuits: if the claim has a formula, software, or other alleged "abstract idea" then the claims must be invalid! In their analysis, the Federal Circuit rightly proclaimed "that a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction." The Federal Circuit's reasoned decision in Thales Visionix can now be added to an attorney's arsenal for responding to a §101 rejection.
Susan L. Crockett, Esq.
By Crockett & Crockett posted on Thursday, March 9, 2017.