Federal Circuit Clarifies Patent Eligibility for Mechanical-Automation Tech

View decision here.

Procedural Background and Decisions

On October 5, 2022, PowerBlock Holdings, Inc. filed a lawsuit in the US District Court for the District of Utah against iFit, Inc., alleging infringement of US Patent No. 7,578,771 (the ’771 Patent). The ’771 Patent is directed to “selecting and adjusting the weight of a sectorized dumbbell” so as to protect against user injury. ’771 Patent at 1:15-19.

iFit moved to dismiss and the District Court found in favor of iFit, ruling that asserted claims 1-18 and 20 are directed to the abstract idea of “automated weight stacking,” rendering the claims ineligible under § 101. In November 2023, PowerBlock appealed the district court decision. On August 11, the Federal Circuit reversed the district court’s dismissal and remanded the case for further proceedings. Notably, in reaching its decision that the asserted claims were indeed eligible, the Federal Circuit distinguished two “software cases” where courts had previously invalidated claims.

• The First “Software Case”: The Federal Circuit rejected the district court comparison to University of Florida Research Foundation, Inc. v. General Electric Co., 916 F.3d 1363 (Fed. Cir. 2019), which it concluded was merely a “do it on a computer [software automation]” or “with AI” patent devoid of any technical improvement.

• The Second “Software Case”: The Federal Circuit distinguished abstract claims of Chamberlain Group, Inc. v. Techtronic Industries Co., 935 F.3d 1341 (Fed. Cir. 2019) directed to a garage door opener that “wirelessly communicat[ed] status information about a system” because they failed to improve any communication system.

In contrast, the Federal Circuit emphasized that claim one of the ’771 Patent is different.It recites elements of a “mechanical device with an electronic motor that physically moves a selector” and results in a “specific mechanical improvement to selectorized dumbbell weight stacking.” This improvement, the panel argued, confers eligibility.

The Claim-20 Conundrum

The Federal Circuit also considered oral arguments in reaching its decision. Notably, the court heard discussion of O’Reilly et al. v. Morse et al., 56 US 62 (1854). In O’Reilly, the US Supreme Court rejected an intangible patent claim lacking any mechanical process as ineligible but found more structurally detailed claims to be eligible. PowerBlock argued that O’Reilly is relevant to the court’s eligibility analysis and noted that claims one and 20 should not be treated together because claim 20 is broader than claim one.

However, the Federal Circuit ultimately concluded that “claims [1 and 20] rise or fall together” because “the parties did not argue them separately.” This decision may be a “misstep” by the Federal Circuit. For instance, neither PowerBlock or iFit designated claim one as representative for § 101 analysis, and oral arguments included extensive discussion of significant differences between the two claims. Claim 20 is not only much broader than claim one, but it also fails to identify any physical movement for the selector or any coupling mechanism. Thus, iFit may consider a limited rehearing petition discussing whether the Federal Circuit improperly applied a representative-claim approach to claim 20.

Additional Considerations

The court also invoked Supreme Court precedent in arriving at its decision. For example, the Federal Circuit discounted iFit’s suggestion to ignore the selectorized-dumbbell claim elements in favor of what the patentee purportedly added — energizing a motor in response to user input. Citing Diamond v. Diehr, 450 US 175 (1981), at Alice step one, the court made sure not to remove “old” or conventional (e.g. dumbbell) elements in its eligibility analysis, noting that such an over-simplification would convert a § 101 inquiry into an indirect novelty or obviousness test.

Further, in a notable rhetorical inversion of quote citations, the Federal Circuit cited both Parker v. Flook, 437 US 584 (1978) and Mayo v. Prometheus, 566 US 66 (2012) to warn against conflating § 101 with §§ 102 and 103, even though those very decisions originally highlighted § 101’s independent policing responsibility. This court emphasized it will not omit prior art claim elements in its finding that the’771 Patent is non-abstract and eligible.

Broader Implications

The PowerBlock decision clarifies that automation claims involving specific physical and mechanical improvements can save otherwise ineligible claims from abstraction. Going forward, litigants may focus on the physical (versus software) implementation of mechanical devices utilizing automation, including, for example, robotics, and certain artificial intelligence inventions when assessing patent eligibility.

In a petition filed on September 10, iFit Inc. urged the full Federal Circuit to set aside the panel decision that revived the ’771 patent, warning that the validity holding “risks destabilizing the law of patent eligibility.” Such an outcome “threatens to create a loophole that may allow claims directed to abstract ideas to survive Section 101 scrutiny by simply reciting conventional components of a physical structure that perform their basic functions at a high level,” the petition added.

ArentFox Schiff will continue to monitor developments in this area of patent law and provide updates as warranted.