“Vidal’s brief claims the Eastern District of Texas’ jury instructions regarding patent eligibility ‘misstate the relevant [Alice step two] inquiry, and their use in this case—and in others that use them as a model—constitutes reversible error.’”
Former U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal, now with Winston & Strawn, filed an amicus brief on Tuesday in an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) of a district court decision upholding a jury verdict that Ollnova Technologies’ patent claims were not ineligible at step two of the Alice-Mayo patent eligibility framework.
Vidal’s brief was filed on behalf of SAP America, Inc., HP Inc., Forescout Technologies, Inc., and the High Tech Inventors Alliance (HTIA) and argues in support of defendant cross-appellant ecobee Technologies that “the district court’s jury instruction and verdict form question on patent eligibility in Ollnova—which has become the model for patent eligibility in the Eastern District of Texas and has been imported into other districts —are legally incorrect” because they “lower the standard for patent eligibility and permit a jury to uphold claims where their only inventiveness lies in the patent ineligible subject matter….”
In September 2024, Judge Rodney Gilstrap of the Eastern District of Texas denied ecobee’s motion for judgment as a matter of law (JMOL) or a new trial, dismissing ecobee’s claim that “no reasonable juror could have found the asserted claims of U.S. Patent No. 7,860,495 (the “’495 Patent”) to be not ineligible under 35 U.S.C. § 101.”
The ‘495 patent is titled “Wireless Building Control Architecture” and generally claims “improvements in smart home and building energy management technology,” according to Ollnova’s opening appeal brief. Ollnova alleged that ecobee infringed claims 1 and 2 of the ’495 Patent and ecobee moved to dismiss on the ground that the claims were directed to patent ineligible subject matter. The district court found that claim 1 was directed to an abstract idea but that “fact issues with respect to Step Two precluded dismissing the complaint.” Specifically, the court said that ecobee had failed to address Ollnova’s argument that “[t]he ’495 Patent claims a wireless building automation control system comprising two different wireless communication protocols that was not conventional as confirmed by the prosecution history.”
Step two of the Alice inquiry analyzes whether the claim contains an “inventive concept” that transforms the abstract idea into a patent-eligible application.
Ecobee moved for summary judgment on patent ineligibility, arguing there was no factual dispute on the latter point. But Ollnova said “the combination of elements was not conventional because it addressed ‘two different wireless networks within a building,’” and the court ultimately agreed. A jury trial was held and the verdict found that “ecobee had not proven by clear and convincing evidence that the limitations of the ’495 Patent, when taken individually or when taken as an ordered combination, involve only technology which a person of ordinary skill in the art would have considered to be well-understood, routine, and conventional as of April 9, 2024,” said Gilstrap’s September 2024 opinion.
On appeal, Ollnova is contesting only the district court’s decision to postpone the prejudgment interest on the jury’s lump sum award of $11.5 million for Ollnova from the date “the infringement began” to four years after the date of first infringement. But ecobee is appealing the district court’s refusal to find the three patents at issue ineligible, which it says was erroneous because none of the patents—which were all issued before the Supreme Court’s decision in Alice—”can survive scrutiny when Alice is faithfully applied.”
Relevant to the amicus brief filed by Vidal, ecobee contends that one of the district court’s legal errors was in its failure “to inform the jury that it had found the ’495 patent claims to be directed to an abstract idea,” refusal to “tell the jury what that abstract idea was, and refus[al] to instruct the jury on the black letter law that the abstract idea cannot supply the inventive concept.”
Vidal’s brief claims the Eastern District of Texas’ jury instructions regarding patent eligibility “misstate the relevant [Alice step two] inquiry, and their use in this case—and in others that use them as a model—constitutes reversible error.”
Ultimately, says the amicus brief, the instructions, which are reproduced in their entirety in the brief, and verdict form “invited the jury, in its conventionality analysis, to consider, rather than ignore, the abstract idea.”
The amici are asking the Federal Circuit to “correct the error in this case and prevent its perpetuation by clarifying that a jury must exclude the abstract idea from consideration under Alice Step Two.” The brief also asks that the court clarify that juries “may consider only the ‘additional elements’ that describe something other than, and in addition to, the abstract idea” and provide clear guidance for other courts on how to structure such instructions and verdict forms.
For its part, ecobee is asking the CAFC to reverse or vacate the final judgment, and find that the ’495 patent, as well as Ollnova’s U.S. patents 8,264,371 and 7,746,887, which were found by the jury to be eligible, are patent ineligible under 35 U.S.C. § 101, and that Ollnova failed to demonstrate infringement of the ’371 patent.
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Author: Tolikoff
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