Surviving an Ineligible-Subject-Matter Motion to Dismiss with Software-Related Claims
By James Harris | September 27, 2022
On September 21, 2022, Judge Rodney Gilstrap denied a motion to dismiss in Ollnova Tech. Ltd. V. Ecobee Tech. ULC, after the defendant argued that two building automation patents claimed patent-ineligible abstract ideas. The case is instructive as it shows that if software patent claims are to survive an Alice challenge at the pleading stage, it may be extremely helpful that the claim recite elements that the patent specification ties to the solution of a technical problem.
One claim at issue recited an automation component comprising a multi-sensor package, a wireless radio, a processor, and a memory to store both instructions for the processor and sensor data. All of these elements would likely be seen as routine and conventional, which could have been problematic for the claim, were the judge to find at Step 1 of the Alice inquiry that the claims were drawn to an abstract idea.
The remaining elements of the claim were what the instructions do—cause the processor to receive a wake-up command from a second automation component, send stored sensor data to the second component, and then receive a power-down command from the second component.
Judge Gilstrap stated that “[e]xamining the ‘focus’ of the claims and their ‘character as a whole’ reveals that claim 13 is directed to specific issues of wireless communications in a building automation system….” He further stated that “[t]he claim language governs § 101 analysis—however, the specification can assist in determining whether claims are directed to an abstract idea.”
He then stated that “[c]onsidering the specification, claim 13 of the ‘282 Patent embodies technology-based solutions that improve the power conservation of devices communicating wirelessly in building automation systems…The ‘282 Patent teaches that ‘[w]ireless devices and/or automation components may be configured to optimize radio and/or data communications to extend battery life,’ and the ‘wake-up’ and ‘power-down’ commands as recited in claim 13 are tied to ‘power saving.’”
This case highlights a useful strategy to preempt §101 challenges by including a demonstrable tie between technical advantages in the specification and limitations present in the claims.