Thales: Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

CAFC Decision: Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept.

Background: The system claim at issue requires a first sensor on a “tracked object,” a second sensor on a “moving reference frame,” and an “element” that receives signals from both sensors and determines an orientation of the tracked object relative to the moving reference frame. (A similar method claim was also found eligible.) Traditional inertial tracking systems measured inertial changes with respect to the earth. In contrast, the claimed system measures changes with respect to the moving reference frame. According to the patent, this unique combination and arrangement of sensors provides better accuracy and requires less effort to set up than other systems.

Issue:  The Court of Federal Claims reasoned that the claims were directed to mere laws of physics. The Court found that the claims were directed to the idea of using “mathematical equations for determining the relative position of a moving object to a moving reference frame.” 122 Fed. Cl. at 252. The Court explained that while the equations represented “complex mathematical concept[s] and a solution to the problem of tracking two moving objects in relation to each other,” they still represented a “building block of human ingenuity” and that the solution lay in the formulas rather than the devices in the claims. Id. The Court also found that there was no inventive concept beyond that idea because the claims required “generic, fungible inertial sensors.” Id. at 253.

Outcome:  On appeal, the Federal Circuit relied on Diamond v. Diehr, 450 U.S. 175 (1981). In Diehr, the claims utilized the well‑known Arrhenius equation to calculate optimal cure time for curing and molding raw rubber. The Diehr court found the claims patent‑eligible as they improved upon the prior methods of curing rubber by constantly measuring actual temperature, recalculating cure time based on the temperature, and automatically opening the press at the end of the cure time.

The Federal Circuit found the claims in Thales “nearly indistinguishable” from those in Diehr. Slip op. at 8-9. Just as in Diehr, while the invention uses mathematical equations to determine the orientation of the object relative to a moving frame, the equations are used in conjunction with an “unconventional utilization of inertial sensors” that may seem “strange” to those skilled in the art. Slip op. at 9-10. Importantly, the Court found that the claims did not try to tie up the equations or use of physics principles themselves, but “seek to protect only the application of physics to the unconventional configuration of sensors.” Slip op. at 11. The unconventional use of sensors led the Court to conclude that the claims were not directed to an abstract idea.

The Court did not go to the second step of the Alice/Mayo framework (“inventive concept”), having found the claims not directed to an abstract idea. Id.

Prosecution Takeaway:  Thales could be useful in cases where the invention relies on an application of physics or the laws of nature. Explain to the Examiner that your claims do not seek to tie up the accused law of nature but only the application of a principal to a particular configuration of elements. Moreover, amending the claims to require an “unconventional” configuration of devices – even if your claims recite generic or known devices – may assist in overcoming a finding of ineligibility as being directed to an abstract idea.

Also read our related post on the Federal Circuit IP Blog here.