Court Dismisses Patent Claims Directed to Intermittent Fault Detection in Electrical Systems for Aircrafts as Ineligible Subject Matter Under 35 U.S.C. § 101 | Akin Gump Strauss Hauer & Feld LLP
A district court recently granted a Rule 12(b)(6) dismissal of patent claims directed to intermittent fault detection (IFD) technology for electrical systems in aircrafts, deciding that the asserted claims are patent ineligible subject matter under 35 U.S.C. § 101. The court found that the claims fail to recite any specific technological improvements over the prior art, because the alleged innovations were described in the specification but not recited in the claims.
Total Quality Systems, Inc. v. Universal Synaptics Corp., 1:22-cv-167 (D. Utah May 23, 2024).
Total Quality Systems sued Universal Synaptics in the District of Utah, and Universal subsequently brought counterclaims alleging infringement of U.S. Patent Nos. 8,103,475 and 10,641,826. The patents are directed to intermittent fault detection (IFD) technology, which forms the basis of an intermittent fault detection and isolation system (IFDIS). The IFDIS includes five major components: (1) the IFD; (2) a shake table to simulate the flight environment; (3) an environmental chamber to simulate the flight environment; (4) an interface test adapter (ITA), which is a wiring harness that interconnects a unit under test (UUT) to the IFD; and (5) various other Universal Synaptics trade secrets.
Claim 1 of the ʼ475 Patent recites (simplified):
An apparatus for testing a system, the apparatus comprising:
a plurality of inputs each adapted to receive a signal from a test point;
a switching module including:
a first output selectively coupled to receive and output one or more of the inputs; and
a set of outputs excluding the first output and corresponding in number to the inputs, each of the outputs in the set of outputs being selectively coupled to receive and output a corresponding one of the plurality of inputs;
a neural network coupled to the set of outputs, the neural network configured to measure electrical characteristics of each of the test points at the same time when the set of outputs is selectively coupled to output the inputs to the neural network; and
a test meter coupled to the first output such that the test meter can measure electrical characteristics of the test points when the first output is selectively coupled to output the one or more of the inputs to the test meter;
wherein when the first output is selectively coupled to output the one or more of the inputs to the test meter, the switching module is configured to sequentially couple one or more combinations of test points to the test meter such that electrical characteristics of a first test point relative to one or more other test points is determined.
Claim 8 of the ʼ475 Patent recites:
An apparatus for testing a system, the apparatus comprising:
at least one row sense line and at least one column sense line;
an array of nodes each receiving a signal from the system under test, wherein each node is electrically coupled to a specific test pin and a switch specific to the node, the nodal switch being electrically coupled to the specific test pin, each of the nodal switches being configured to selectively couple a signal that is alternative to the system under test signal received at the corresponding node to the at least one row sense line and the at least one column sense line;
a circuit coupled to the at least one row sense line and configured to detect the signal coupled to the row sense line; and
a circuit coupled to the at least one column sense line and configured to detect the signal coupled to the column sense line.
Claim 12 of the ʼ826 Patent recites:
A method of mapping interconnections between connection points in a unit under test (UUT), the method comprising:
accessing a test module comprising at least one UUT, the UUT comprising one or more connection points;
instantiating a database table with one or more database table entries configured to list connections identified between the connection points, wherein the database table entries are configured to store a resistance level measured at each connection point;
provisioning a switch connected to each connection point to automatically detect interconnections on the UUT, the switches being configured to identify which connection points in the circuit board are electrically connected; and
storing an indication of the identified interconnections in the database table entries, such that the UUT’s interconnections are mapped and stored in the database table.
The court analyzed eligibility using the Supreme Court’s two-step Alice framework. In step one, a court determines whether the claims are “directed to a patent-ineligible concept,” such as an abstract idea. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two—the search for an “inventive concept”—and considers “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 78-79 (2012)). An inventive concept is more than merely implementing an abstract idea using “well-understood, routine, conventional” activities previously known to the industry. Id. at 225.
1. Alice Step One
Under Alice step one, the defendant argued that claims 1 and 8 of the ʼ475 patent are directed to the abstract idea of detecting electrical signals, and that claim 12 of the ʼ826 patent is directed to the abstract idea of mapping connection points using well-known generic technology and storing results. According to the court, the patent owner only responded with “conclusory statements that the claims are ‘unique arrangements of physical elements’ or ‘an electronic device,’” which did not address the defendant’s arguments. In its briefing, the patent owner indicated that the court could and should resolve the Alice inquiry only at the second step. “Without any meaningful argument to the contrary,” the court concluded that the claims are directed to abstract ideas.
2. Alice Step Two – Claims 1 and 8 of the ʼ475 Patent
The court found that claims 1 and 8 of the ʼ475 patent do not satisfy the Alice step two analysis, because patent owner’s pleading does not detail “specific improvements” compared to the prior art. The patent owner relied on the prosecution history, arguing that allowance of the claims by the U.S. Patent and Trademark Office proves they are drawn to patent-eligible subject matter. The court, however, distinguished between satisfying elements of novelty and non-obviousness, which was addressed in the prosecution history, and eligibility under § 101. The court also found that the patent owner did not point to language in the claims or the patent specification that explain improvements over the prior art.
The court distinguished Cooperative Entertainment, Inc. v. Kollective Technology, Inc., 50 F.4th 127 (Fed. Cir. 2022). In that case, the Federal Circuit reversed a dismissal based on § 101 ineligibility because the patent specification and the complaint explained how the particular network structure for sharing content recited in the claims was different from and improved upon the prior art. In particular, the specification in that case identified failures in the prior art and clearly contrasted the patented claim with the prior art.
3. Alice Step Two – Claim 12 of the ʼ826 Patent
The court found that claim 12 of the ʼ826 patent also does not satisfy the Alice step two analysis, because the patent owner did not point to any specific language in the specification, the claim, or the prosecution history to establish that claim 12 reflects a “non-conventional and non-generic arrangement.” The patent owner argued that the claim represents an improvement over the prior art by pointing to innovations described in the specification. Citing Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017), however, the court stated that “the Federal Circuit was not persuaded by an innovation that was only described in the specification and not in the claim itself.”
Practice Tip: Patent owners should avoid claiming merely generic and conventional prior art systems to carry out general processes using well-understood techniques. Instead, patent owners should claim a specific technological improvement and describe it in the specification, such as by identifying a failure in the prior art, describing the improvement and explaining its source of inventiveness.
