Failure to Identify the Invention and to Explain How you Do It May Lead to Invalidity under Section 101

October 5, 2022

Integrated Technology Solutions, LLC (“ITS”) alleged that products manufactured and distributed by Motorsport Simulations, LLC ("iRacing") infringed on U.S. Patent 10,046,241. iRacing moved to dismiss, arguing that the ‘241 patent was invalid under 35 U.S.C Section 101, as construed by Alice Corp. Pty. Ltd. v. CLS Bank Int'l., 573 U.S. 208 (2014), and its progeny, because the asserted claims were directed to an abstract idea and were patent-ineligible. The U.S. District Court, D. Massachusetts (“the Court”) found that the claims at issue were directed at patent-ineligible concepts, and that the elements of each claim did not transform the claim into patent-eligible application, and granted the motion to dismiss. 

The ‘241 patent relates to systems, methods, and other embodiments associated with output production. It is described as an “in-game modifier for racetrack videogames whereby evaluations of both simulated environmental conditions and player actions change the performance of the system during game play.” The patented methods involve multiple systems comprised of identification, check, determination, and modification components. ITS asserted that iRacing’s non-downloadable online competitive racing simulation software infringed on one or more claims of the ‘241 patent, that iRacing’s subscription service to use the non-downloadable online simulation software induced infringement.  ITS further asserted a claim of contributory infringement based on iRacing’s continued sale of the subscription service for the software.

Analyzing the claims at issue, the Court first considered whether the claims were directed to a patent ineligible concept under Alice Step One. ITS argued that the claims were directed to more than just an abstract idea, because the “patent describes improved rendering techniques for maps” that “provide greater accuracy in game mechanics and allow for indirect player interaction as the rendered maps are continually modified.” ITS further asserted that the temperature and tire elements in racing games were “only two of many elements in one of many invention embodiments” described in the specifications, and that “at least” the modification component was not abstract, where “one of the touchstones of abstraction is whether a person could perform the claimed steps in their head,” and a human cannot modify a racetrack by determining to leave tire remnants.

iRacing contended that “the basic thrust of the independent claims is the abstract idea of simulating the impact of a racetrack surface on a vehicle’s performance,” and that “[e]ach claim merely enumerates a series of generic steps that describe the raw concept of this simulation, not how to perform it.” The claims do not “recite any non-generic hardware that might change this result” where the “components are merely placeholders for any available generic hardware or software” and a “human could perform the claimed operations mentally without even using a pencil and paper.”

The Court found that ITS had failed to refute the generality of the claims and that the patent did not extend beyond an abstract concept where it did not specify how to perform the purported concepts and was overly broad in its attempt to specify numerous variations on the overarching idea. “While the claims list ‘identification component[s],’ ‘check component[s],’ ‘determination component[s],’ and ‘modification component[s],’ … nowhere does the ‘241 Patent sufficiently detail how these components will actually be performed or implemented. As the Federal Circuit has explained, ‘[c]laims directed to generalized steps to be performed on a computer using conventional computer activity are not patent eligible.’ Two-Way Media Ltd. v. Comcast Cable Communs., LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017).” The Court pointed out that the components represented generalized steps and failed to specify how these steps were to be performed. “Patent ‘241 does not place limitations or specifics on how the claimed components will aim to identify, check, determine, and modify the racing area. The specifications only underscore the generalization of the claimed components.”

iRacing further argued that in Bot M8 LLC v. Sony Corp. of Am., 465 F. Supp. 3d 1013 (N.D. Cal. 2020), “the court invalidated a gaming patent claim that, like the ‘241 Patent, recited a series of formless ‘devices’ (no different from the claimed ‘components’ here) for performing generic steps.” ITS argued that the ‘241 patent contrasted with that in Bot M8, because “[a] driver cannot perform a mental step of modifying a discrete section of track, much less to what degree, when there is no stimulus with which to prompt [the] driver to do so, especially in the environment of an actively played game.” ITS contended that the present case was different from Bot M8 because in that case, the methodology that linked players to modify a slot-machine game could easily be performed by the human mind. In Bot M8, the Northern District of California analyzed the eligibility of a patent describing the process where “a game result achieved by a game player and a game result achieved by another game player are totalized and the specification value is changed in accordance with the total result.” Bot M8, 465 F. Supp. 3d at 1017-18. On summary judgment, the court found the patent ineligible under Alice, noting that while it described a function for modifying video games based on player interaction, “the claim leaves open how to accomplish this, and the specification provides hardly any more direction.” Id. at 1020. Further, the court noted that although the patent was limited to the field of gaming machines, it “merely recites result-oriented uses of conventional computer devices,” and “neither the patent specification, patent owner, or patent owner’s experts articulate a technological problem solved by the [] patent.” Id. at 1020.

Here, the Court noted that the ‘241 patent similarly failed to describe the “how” regarding the identification, check, determination, and modification components. As in Bot M8, the ‘241 patent specifications failed to alleviate any of the ambiguity in determining how to accomplish the patented claims. The specification provides numerous applications of the claimed process but fails to detail the ‘how’. ITS further attempted to distinguish BotM8 on the ground that humans could not perform the ‘241 patent function in their mind. However, the Court noted that “the processes to be performed—identifying, checking, determining, and modifying—are all components of ordinary mental processes.” “While ITS asserts that a human-being cannot modify a racetrack by intentionally leaving a remnant … such racetrack modification is irrelevant. In Electric Power, the patent claims included complex descriptions of detection, display, accumulation, and derivation of voltages and frequencies from phasor measurements. 830 F.3d 1350, 1351-52. However, the courts ‘have treated analyzing information by steps people go through in their minds . . . as essentially mental processes within the abstract-idea category.’ Id. at 1354. ‘[M]erely selecting information, by content or source, for collection, analysis, and display, does nothing significant to differentiate a process from ordinary mental processes.’ Id. at 1355. Similarly, the claims of the ‘241 Patent describe processes performed in the human mind, and provide nothing more to remove themselves from abstraction, and the addition of the virtual racetrack does not change the analysis.”

ITS further argued that the '241 patent provided many advantages over the prior art by allowing “indirect interaction between players,” through racetrack modification, thereby presenting commercial value for various entities. iRacing contended that the claims, which only contain generic components, “do not recite improvements to computer technology that would spare them from abstraction.”  The Court agreed that the '241 patent invoked “the use of unspecified computer technology to run an abstract process of identifying, checking, determining, and modifying.” ITS attempted to save this process from abstraction by describing its application as “improved map rendering of the disclosed invention.” However, “where ITS fails to offer any technological means of effecting that concept, providing instead an amorphous set of varying processes accompanied by 22 figures, the claims of the ‘241 patent fail to rise above abstraction under Alice step one.” The Court relied on multiple cases and noted that “the lack of clear instruction as to how these logical structures and processes are implemented to improve computer technology brings the ‘241 Patent claims into the realm of abstract ideas.” “ITS contends that the ‘241 Patent is similar to that in McRO because developing human-created rules that can be performed in the human mind ‘is a particular way of programming or designing software’ that ‘does provide an adequate description for those skilled in the art to accomplish the procedures set out in the claims.’” See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). The Court, however, noted that “unlike in McRO, the claims here do not recite specific steps or processes to effectuate the claims. Indeed, the ‘241 Patent reads like an invitation for someone to create the software that may or may not improve the technology associated with racing simulations.” The Court concluded that, as written, the ‘241 patent “does not avoid abstraction where it provides no clear guidance on how the claims will be performed.”

The Court further reviewed the claims under Alice Step Two, i.e., does the inventiveness of the claim make it patent eligible? Concerning the inventiveness, ITS argued that the ‘241 patent resolved technical problems related to computerized gaming simulations, particularly in systems providing a more realistic simulation by allowing for the indirect player interaction. According to ITS, the solution to this problem was to identify a racing area, determine the effect of the characteristic in the area, and then modify the area based upon the effect in a manner that modifies the game itself. “This collection of steps is a particular and transformative one.” iRacing argued that the ‘241 patent did not recite an inventive concept that served to transform the abstract idea into a patent-eligible application. iRacing pointed out that the identification, determination, and modification functions of the claims in the ‘241 patent were the ineligible abstract idea itself, and therefore could not supply the separate inventive concept. “The specification does not limit the components to any specific arrangements or definition where they only state the potential incorporation into other components. Finally, iRacing argued that limiting the claims to the technological environment of the videogame did not save the ‘241 patent from ineligibility.

Based on the analysis under Alice and related cases, the Court stated that there was “still nothing that removes the claims from patent-ineligible subject matter. Contrary to ITS's assertions, the ‘241 Patent differs from the patent in DRR Holdings under Alice step two because the specifications at issue do not sufficiently bring the claim out of abstraction. In that case, the court held that the claims ‘specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.’ DDR Holdings, 773 F.3d at 1258.” ITS argued that the modifications in its patent were similarly interdependent and “override a routine and conventional sequence of events” that was “specific to problems in the realm of these gaming technologies.” The Court, however, determined that the claims of the ‘241 patent did not recite a specific way to automate the tire remnant and temperature changes sought and that the claims “fail to recite ‘additional features’ that bring the claims out of abstract ideas into the realm of cognizable programmatic solutions.” The claims of the ‘241 patent “invoke alterations of virtual worlds and the components therein, and in the setting of a virtual world, none of these components are inventions of ITS.” Furthermore, the claims of the ‘241 patent fail to claim an “ordered combination of claim limitations that transform the abstract idea of [modifiable virtual worlds] into a particular, practical application of [the] abstract idea.”  The Court granted iRacing’s motion to dismiss.

It is important to remember that the name of the game is still the Claim. Many Section 101 rejections are a result of how the claims are constructed. Many patent eligibility disputes arise because of lack of precision in the claims and failure to identify the invention and explain how it has been achieved. It is important to identify What the invention is and How you do it (steps, combinations, etc.) and therefore the key to success is quality claims. Reciting a result rather than how the result has been achieved may lead to patent ineligibility.  When the specification clearly defines the problem being solved and how the solution improves upon previous approaches (and make sure this is reflected in the claims), rejections under Section 101 may be avoided. An invention that involves a technical solution to a technical problem is more likely to be eligible. Also, specific elements may make claims patent eligible. The claim’s specificity and technical character should be connected to its advance over the prior art and a description of the invention with a high level of specificity, including specific components and how they communicate and work together, may save the claim.