November 16, 2020

Remote Appliance Control Patent Compared to Pony Express, Invalid Under Section 101

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

Karamelion has asserted its two patents more than 40 times since the summer of 2018, typically settling the cases prior to a responsive pleading. This activity will have to go on hold, at least for the time being, as the U.S. District Court for the Northern District of Illinois found that Karamelion's two patents are directed to ineligible subject matter under Section 101.

The Court's Decision

Karamelion asserted its two patents against Intermatic, both of which are related to controlling many distributed appliances. Intermatic filed a motion to dismiss, arguing that both patents are directed to ineligible patent subject matter under Section 101.

At Alice step one, Karamelion argued that its patent claims were directed to "an improved appliance controller with specific relay functionality for a distributed appliance system" and that the problem that its purportedly improved appliance controller addressed is communication over a distance, a problem for which the prior art "offers only difficult or expensive solutions." According to Karamelion, its patents solved this problem by "breaking up the distance with relays."

Judge Sharon Coleman was not convinced. First, she noted that the claimed improvement "is the addition of relay functionality the controller" and not "about making an appliance controller do its job of controlling an appliance any better." On the matter of breaking up distance with relays, she said this "is exactly the same solution the Pony Express used in the mid-1800s." And based on the claims' language failing to provide "anything more than functional language implementing generic components with nonspecific computer instructions," Judge Coleman found that this often indicates that the claims are directed to an idea rather than a specific technological advance.

Judge Coleman finally rebutted Karamelion's argument that the claims are not directed to an abstract idea because they're reciting tangible components. As often is the case, the "mere fact that an abstract idea is implemented in a concrete or tangible way does not change the underlying, patent-ineligible focus of the claims." Here, the court found that the asserted claims were directed to the abstract idea of using a network of relays to communicate over a distance.

At Alice step two, the court found that the asserted claims did not present an inventive concept beyond the abstract idea. When looking at the claim elements, it was clear that they combine generic components to create the "improved appliance controller." Karamelion argued that it is the combination of the components, combined with the claimed method, that "forms an unconventional solution that the prior art failed to adequately address."

Judge Coleman was again unconvinced. The problem concerns communicating with a widespread system of appliance controllers, and the supposed innovation is to create a network of remotely controlled appliance controllers by adding relay functionality. The claimed solution, however, merely added generic satellite transceivers and then remotely controlled them by relaying communication.

Relying on ChargePoint, the court found that this was not an inventive concept. The claims "do not add this functionality to the appliance controllers in an unconventional way beyond simply positioning a generic microcomputer between the generic satellite radio transceiver . . . Invoking conventional network technology in a routine way using generic components does not transform the claim into a patent-eligible application."

The court, finally, stated that the asserted claims would inhibit innovation by requiring other inventors to license "the idea of adding network communication to any system of appliance controllers." If the claims were allowed to stand, they would be "mere rent-seeking, and will impede innovation rather than promote it." The court, accordingly, dismissed Karamelion's complaint with prejudice.

Below is a representative claim from one of Karamelion's asserted patents:

A method for controlling a distributed array of appliances from a headend computer, comprising the steps of:

(a) providing a headend computer having a main radio transceiver;

(b) providing a distributed array of relay units, each relay unit having a satellite radio transceiver and a unique serial number, at least some of the relay units being electrically interfaced to a corresponding portion of the appliances;

(c) signaling by the main transmitter from the headend computer the addresses of at least three relay units, one of the addresses being a destination address, the other addresses including first and second relay addresses, and a control signal for an appliance being interfaced to a destination relay unit having a serial number corresponding to the destination address;

(d) decoding the first relay address at a first relay unit having a corresponding serial number;

(e) transmitting the control signal, the second relay address, and the destination address from the first relay unit;

(f) decoding the destination address at the destination relay unit; and

(g) feeding the control signal to the appliance from the destination relay unit.

The case is Karamelion LLC v. Intermatic Inc., Case No. 1:20-cv-0639, 2020 WL 6545058 (N.D. Illinois, Nov. 6, 2020).

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