United States District Court, D. Maryland
CHARGEPOINT, INC. Plaintiff
SEMACONNECT, INC. Defendant
MEMORANDUM AND ORDER: MOTION TO DISMISS
J. Garbis United States District Judge
Court has before it Defendant's Motion to Dismiss for
Failure to State a Claim [ECF No. 41] and the materials
submitted related thereto. The Court has held a hearing and
has had the benefit of the arguments of counsel.
ChargePoint, Inc. (“ChargePoint”), founded in
2007, is a Delaware corporation with its principal place of
business in Campbell, California. Compl. ¶ 21, ECF No.
1. ChargePoint claims itself to be the “pioneer in the
electric vehicle charging infrastructure industry, ”
boasting “tens of thousands of stations that have been
used more than 16 million times” worldwide.
Id. ¶ 5. ChargePoint owns United States Patent
Nos. 7, 956, 570 (the “‘570 Patent”); 8,
138, 715 (the “‘715 Patent”); 8, 432, 131
(the “‘131 Patent”); and 8, 450, 967 (the
“‘967 Patent”) (collectively, the
“Asserted Patents”). Id. ¶ 8.
Asserted Patents generally relate to various methods,
systems, and apparatuses for networked electric vehicle
(“EV”) charging stations.
SemaConnect, Inc. (“SemaConnect”), a Maryland
corporation based in Bowie, Maryland, manufactures EV
charging equipment. Id. ¶ 22.
Complaint [ECF No. 1] accuses SemaConnect of offering to
sell, selling, and using EV charging devices that infringe on
the Asserted Patents. Id. ¶ 30-33.
December 28, 2017, by the Memorandum & Order Re:
Temporary Injunction [ECF No. 39], the Court denied
ChargePoint's attempt to obtain a Temporary Injunction.
SemaConnect subsequently filed the present motion and has
submitted its Identification of Non-infringement Defenses
[ECF No. 42], which includes the defense that the Asserted
Patents are invalid under 35 U.S.C. § 101.
instant motion, Defendant SemaConnect contends that United
States Patent Nos. 7, 956, 570; 8, 138, 715; 8, 432, 131; and
8, 450, 967 are invalid because they are not directed to
patent-eligible subject matter pursuant to 35 U.S.C. §
101. The Asserted patents were all issued prior to the
Supreme Court's decision in Alice Corp. v. CLS Bank
Int'l, 134 S.Ct. 2347 (2014).
The Alleged Invention
four Asserted Patents share a specification and claim
priority to United States Provisional Application No. 61/019,
474 filed on January 7, 2008.
specification describes a system of EV charging stations that
are connected to a remote server via a network (i.e., the
Internet). ‘570 Patent 3:35-45. The remote server
stores a variety of information including customer profiles,
load data from the electric grid (updated in real time), and
electricity consumption data. Id. The EV charging
station and server can be remotely accessed and controlled by
a user via a cell phone or other electronic device.
Id. at 3:48-53.
system may also contain features such as an electric meter to
measure consumption of electricity through each charging
station, a payment station (separate from the individual
charging station), or a device to detect whether a parking
spot is occupied. Id. at 3:54-65.
specification essentially states that the system provides two
main improvements over previously-available technology: (1) a
customized and convenient user experience and (2) management
of electric flow based on electric grid load data.
Id. at 3:64-5:3. The specification purports to
achieve these alleged improvements by filling the need for an
“efficient communication network” between
charging stations, customers, and electric utility companies.
Id. at 1:30-35, 2:19-23.
customized user experience allows the user to monitor,
control, and pay for charging a vehicle from a remote device
such as a cell phone. Id. at 4:16. It allows a user
to “enabl[e] charge transfer” and monitor
electric consumption by communicating a request to the
server. Id. at 4:16-43. The server then sends a
command to enable (or disable) electric flow between the
vehicle and charging station, and the charging station
reports consumption data back to the server which is relayed
to the customer's cell phone. Id.
customer may pay for a charging session by using payment
information stored in a user profile on the server.
Id. The user profile may also include custom payment
rates for each user based on a user's subscription status
and the location of the charging station (e.g., a resident of
a community may be charged a lower rate when using a charging
station in that community). Id. at 3:64-5:3. A user
profile may also contain charging preferences such as only
charging during periods of lower power rates, not charging
during periods of peak power grid load, or selling power from
the vehicle back to the power grid. Id. at 4:56-60.
These features provide greater control and convenience for a
customer over existing technology because a customer may
remotely manage the vehicle charging process (which takes
several hours to complete) rather than having to be present
physically at the site of the vehicle and charging station.
management of electric grid load data through a communication
network may include the ability to “manage peak load
leveling” using “Demand Response” and
“vehicle-to-grid (V2G).” Id. at 2:1-8,
4:44-57. Demand Response is a “preplanned load
prioritization scheme” provided by the utility company
that is used to “reduc[e] consumption of electricity
during periods of high demand.” Id. at
1:37-54. When the electric grid is strained due to increased
demand, the utility company may transmit a command (over a
network) to the server, “requiring a reduction in
load.” Id. at 10:50-60. The server then sends
a signal (over a network) to individual charging stations,
commanding certain charging stations to turn off.
Id. at 4:44-57, 10:50-60. The server may rely on a
customer's user profile (e.g., a customer may only want
their vehicle to be charged during periods of low power
rates) or “the requirements of the [utility
company's] Demand Response system” when deciding
which charging stations to turn off. Id. The
specification also states that the Demand Response system and
customer profile information may allow for vehicle-to-grid
(“V2G”) in which electricity stored in the
vehicle is transferred back to the electric grid during times
of peak demand. Id. at 1:55-67, 9:58-60.
specification states that the need for electric grid load
management of EV charging stations is made possible through
the communication network as claimed in the Asserted Patents.
Id. at 2:1-8.
August 2016, Volkswagen settled the lawsuit brought by the
United States government for its well-known vehicle emissions
scandal (commonly known as “Dieselgate”). The
settlement totaled $15 billion, of which $2 billion was
appropriated to fund an EV infrastructure in the United
States. ChargePoint formally objected to that settlement
during the preliminary court-approval process stating that
the $2 billion investment would “flood a competitive
market” and “threaten the survival of the
current participants in the market, and thus the market
itself.” Nonetheless, the settlement was approved,
and a company called Electrify America, LLC (“Electrify
America”) was formed to manage the implementation of
part of Electrify America's plan includes funding the
cost of equipment and installation for electric vehicle
charging stations, which will be installed at workplaces,
garages, retail centers, and residential locations in chosen
major metropolitan areas.
America considered bids for contracts to manufacture and
install EV charging stations during Phase I of Electrify
America's infrastructure plan. Electrify America narrowed
the list of bidders to four companies, including SemaConnect,
ChargePoint, and two others. Ultimately, Electrify America
awarded contracts to SemaConnect and two other companies but
has since filed the Complaint [ECF No. 1], asserting that
SemaConnect's EV charging station model infringes claims
in the Asserted Patents. ChargePoint specifically points to
network control features in SemaConnect's advertised
models that allegedly infringe on the claims. Compl.
¶¶ 34-77. By the instant motion, Defendant
SemaConnect contends that United States Patent Nos. 7, 956,
570; 8, 138, 715; 8, 432, 131; and 8, 450, 967 are invalid
because they are not directed to patent-eligible subject
matter pursuant to 35 U.S.C. § 101.
Claims at Issue
Asserted Patents present apparatus claims (involving charging
station hardware), system claims (involving a server,
charging station, and other components which interact with
one another), and method claims (involving a process in a
server for deciding to enable charge through a network).
case, ChargePoint asserts eight claims (“the Asserted
Claims”) that are addressed in regard to the instant
‘570 Patent: Claims 31 and 32 (system claims);
‘715 Patent: Claims 1 and 2 (apparatus claims);
‘131 Patent: Claims 1 and 8 (apparatus claims); and
‘967 Patent: Claims 1 and 2 (method claims).
Court would not be required to evaluate each claim separately
if it were clear that they do not “differ in any manner
that is material to the patent-eligibility inquiry.”
Mortg. Grader, Inc. v. First Choice Loan Servs.,
Inc., 811 F.3d 1314, 1324 n.6 (Fed. Cir. 2016). However,
considering that ChargePoint is the non-moving party and has
demonstrated to some degree that the claims are different,
the Court will analyze each claim separately for patent
courts must dismiss a complaint that fails to state a claim
upon which relief can be granted. Fed.R.Civ.P. 12(b)(6).
eligibility under 35 U.S.C. § 101 is a question of law
and a threshold issue that can be suitable for resolution on
a motion to dismiss. Intellectual Ventures I LLC v. Erie
Indemnity Co., 850 F.3d 1315, 1319 (Fed. Cir.
2017)(citing OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362 (Fed. Cir. 2015)).
reviewing a motion to dismiss pursuant to Fed.R.Civ.P.
12(b)(6), a plaintiff's well-pleaded allegations are
accepted as true, and the complaint is viewed in the light
most favorable to the plaintiff. Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007)(citations omitted). To
survive a motion to dismiss, a plaintiff's complaint must
contain sufficient facts that, if assumed to be true, state a
claim to relief that is plausible on its face. Id.
Clear and Convincing Standard
patent eligibility under § 101 is a question of law, the
issues may include underlying questions of fact. Mortg.
Grader, 811 F.3d at 1325. In regard to a patent that has
been issued, “any fact... that is pertinent to the
invalidity conclusion must be proven by clear and convincing
evidence.” Berkheimer v. HP Inc., __ F.3d __,
No. 2017-1437, 2018 WL 774096, at *5 (Fed. Cir. Feb. 8,
2018)(citing Microsoft Corp. v. i4i Ltd. P'ship,
564 U.S. 91, 95 (2011)). “Whether a claim element or
combination of elements is well-understood, routine, and
conventional to a skilled artisan at the time of the patent
is a factual determination.” Id. When the
invention's improvements, as alleged in the
specification, create a factual dispute regarding whether
they describe well-understood, routine, and conventional
activities, a court “must analyze the asserted claims
and determine whether they actually capture these
improvements.” Id. at *6.
Court's review of a Rule 12(b)(6) motion is generally
limited to the contents of the complaint. Zak v. Chelsea
Therapeutics Int'l, Ltd., 780 F.3d 597, 606 (4th
Cir. 2015)(motion to dismiss considers the sufficiency of
allegations set forth in the complaint and “documents
attached or incorporated into the complaint”)(citations
omitted). Consideration of other documents at this stage
could convert the motion into one for summary judgment, which
would be premature because the parties have not yet conducted
any discovery. Id. at 606; see also Theune v.
U.S. Bank, N.A., No. MJG-13-1015, 2013 WL 5934114, at
*4, n.12 (D. Md. 2013). An exception to this rule is that
courts may consider documents that are “integral to and
[are] explicitly relied on in the judgment complaint, ”
without converting the motion to one for summary judgment.
Zak, 780 F.3d at 606-7 (quoting Phillips v. LCI
Int'l Inc., 190 F.3d 609, 618 (4th Cir. 1999)).
has incorporated several expert declarations into its
Memorandum in Opposition to Defendant's Motion to Dismiss
[ECF No. 43] in order to establish the convention of the
field and the subsequent inventiveness of the claims at the
time of the filing date of the Asserted Patents. See
ECF No. 43-1; 43-2; 43-3. The declarations were not relied on
in the Complaint; thus, the exception does not apply. The
Court notes the existence of the declarations but will not
herein consider the contents (or the incorporated arguments
as they apply to the eligibility analysis) as they are not
appropriate at the Rule 12(b)(6) stage.
is no hard-and-fast rule that claim construction is required
before a court performs a § 101 analysis. Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1273-74 (Fed. Cir. 2012). In some cases, claim
construction may be unnecessary. Content Extraction &
Transmission LLC v. Wells Fargo Bank, Ass'n, 776
F.3d 1343, 1349 (Fed. Cir. 2014)(concluding that even
adopting the plaintiff's proposed construction at the
Rule 12(b)(6) stage may not alter the abstract nature of the
case, SemaConnect alleges that the claims are directed to
ineligible subject matter even when accepting
ChargePoint's asserted plain and ordinary meaning of all
claim terms. Def.'s Mem. 17-18, ECF No. 41-1. Thus, no
terms require judicial construction in order for the Court to
resolve the instant motion.
contends that the Complaint fails to state a claim upon which
relief can be granted because the Asserted Claims are
directed to patent-ineligible subject matter pursuant to 35
U.S.C. § 101. SemaConnect contends that each claim is
directed to the abstract idea of “turning a switch on
and off” and that the abstract idea does not amount to
an inventive concept because the claims recite generic
processes and equipment. Def.'s Mem. 20, ECF No. 41-1.
contends that the claims are not directed to an abstract idea
but are, instead, directed to a technological improvement in
EV charging station systems. Pl.'s Resp. 9-13, ECF No.
43. ChargePoint also contends that even if the claims are
directed to an abstract idea, the abstract idea amounts to an
inventive concept because the claims recite non-conventional
and non-generic arrangements of EV charging stations.
Id. at 25.
Court shall examine herein each Asserted Claim to determine
if they are eligible for patent protection by virtue of 35
U.S.C. § 101.
§ 101 Subject Matter Eligibility
101 of the Patent Act defines subject matter that is eligible
for patent protection. It provides:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
35 U.S.C. § 101. In interpreting the meaning of Section
101, the Supreme Court has held that “[l]aws of nature,
natural phenomena, and abstract ideas are not
patentable.” Alice, 134 S.Ct. at 2355
(citations omitted). The Supreme Court reasoned that these
exceptions are “the basic tools of scientific and
technological work” and that monopolization of those
tools would “pre-empt use of this approach in all
fields” and “impede innovation more than it would
tend to promote it, thereby thwarting the primary object of
the patent laws.” Id. (citing Ass'n
for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589-90 (2013); Mayo Collaborative Servs. v.
Prometheus Lab., Inc., 566 U.S. 66, 70-84 (2012)).
the Supreme Court warned that courts must “tread
carefully in construing this exclusionary principle”
because “[a]t some level, all inventions . . . embody,
use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Id. (citing
Mayo, 566 U.S. at 71).
Supreme Court set forth a two-step test to determine whether
an invention is patent-eligible subject matter. A court must
(1) whether the claim is directed to a patent ineligible
concept, i.e., a law of nature, a natural phenomenon, or an
abstract idea; and if so
(2) whether the elements of the claim, considered both
individually and as an ordered combination, add enough to
transform the nature of the claim into a patent-eligible
Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1325 (Fed. Cir. 2017)(citing Alice, 132
S.Ct. at 2355). The Federal Circuit typically refers to step
one as the “abstract idea step” and step two as
the “inventive idea step” when applying the test
to claims challenging an abstract idea exception.
Id. If the claims are found to be directed to a
patent-eligible concept (not abstract) during step one, the
claims will satisfy § 101, and the inquiry ends.
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017).
Step One: Abstract Idea Test
step one of the Alice test, the court must determine
whether the claims are directed to a patent-ineligible
concept such as an abstract idea. Alice, 134 S.Ct.
at 2355. In determining whether a claim is abstract,
“claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299, 1303 (Fed. Cir. 2018)(quoting Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016)(finding that a court must examine the
“patent's ‘claimed advance' to determine
whether the claims are directed to an abstract idea”)).
The Federal Circuit has cautioned against assessing a
claim's “character as a whole” and
“describing the claims at such a high level of
abstraction and untethered from the language of the claims
[such that it] all but ensures that the exceptions to §
101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-37 (Fed. Cir. 2016).
Nonetheless, first, a court must identify the claimed
concept's character as a whole. Id.
court must compare the claimed concept's character as a
whole to claims that have been held to be abstract.
Enfish, 822 F.3d at 1334 (finding that although the
Supreme Court “has not established a definitive rule to
determine what constitutes an abstract idea, ” the
Federal Circuit and Supreme Court have outlined factors to
consider and have “found it sufficient to compare
claims at issue to those claims already found to be directed
to an abstract idea in previous cases.”).
Federal Circuit has held that in determining whether a claim
encompasses an abstract idea, “it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a fundamental . . .
practice long prevalent in our system . . . .” In
re TLI Commc'ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016)(citing Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015)). The Federal Circuit has also stated
that in order to prevent the risk of preemption of an
approach to an entire field, courts must:
look to whether the claims in the patent focus on a specific
means or method, or are instead directed to a result or
effect that itself is the abstract idea and merely invokes
generic processes and machinery. Claims 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 Communications,
LLC, 874 F.3d 1329, 1337 (2017)(citing McRO, Inc. v
Bandai Namco Games America Inc., 837 F.3d 1299, 1314
(2016)); Internet Patents, 790 F.3d at 1348-49).
Even if the claims recite tangible components, the physical
components of the claims cannot “merely be
conduits” for the abstract idea. In re TLI,
823 F.3d at 612; see also Alice, 134 S.Ct. at 2360
(noting that not every claim that recites concrete tangible
components escapes the reach of the abstract-idea inquiry).
The claims must focus on how a result is achieved
instead of reciting “result-based functional
language.” Two-Way Media, 874 F.3d at 1337-8;
see also Electric Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016)(finding that “there is
a critical difference between patenting a particular concrete
solution to a problem and attempting to patent the abstract
idea of a solution to the problem in general”).
the Federal Circuit has consistently held that gathering,
analyzing, transmitting, receiving, filtering, organizing, or
displaying data, and combinations thereof, is an abstract
idea without something more. Electric Power, 830
F.3d at 1353-54 (the collection, manipulation, and display of
electric power grid data, without changing the character of
the information, is abstract); Open Parking, LLC v.
ParkMe, Inc., No. 2:15-CV-976, 2016 WL 3547957, at *8
(W.D. Pa. June 30, 2016), aff'd, 683 Fed.
App'x 932 (Mem)(Fed. Cir. 2017)(moving data from one
place to another, such as transmitting the availability of a
parking space to a driver's cell phone, is abstract);
Content Extraction and Transmission LLC v. Wells Fargo
Bank Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir.
2014)(collecting data, recognizing certain data, and storing
that data is abstract); Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340(Fed. Cir.
2017)(collecting, displaying, and manipulating data is
directed to fundamental financial practices, particularly
validating a payment source over a network and determining a
custom price for a customer based on predetermined rules,
have also been construed to be abstract. Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1371 (Fed. Cir. 2017)(validating a payment source with
stored account information on a server in order to open a
turnstile in a mass transit system is abstract and
non-inventive); Versata Dev. Group v. SAP Am., Inc.,
793 F.3d 1306, 1312-13 (Fed. Cir. 2015)(determining the
customized price of a product for a customer using
organizational and product group hierarchies is abstract);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1354-5 (Fed.
Cir. 2014)(computer applications for guaranteeing a
party's performance of its online transaction are
abstract and ineligible subject matter).
other hand, claims that are directed to a specific
improvement to the functioning of computers or any other
technology or technical field may not be abstract.
Enfish, 822 F.3d at 1335-6 (claims for a specific
database structure involved, but were not directed to, the
abstract idea of organizing information using tabular formats
and instead were directed to improving the way a computer
stores and retrieves data); McRO, 837 F.3d at 1315
(the incorporation of specific rules for producing accurate
and realistic lip synchronization and facial expressions in
animated characters was not abstract because it improved on
the pre-existing process and because the patent claimed
specific rules for achieving the improvement); Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300 (Fed. Cir. 2016)(a distributed network architecture
wherein data is collected and combined from several sources
improved upon the technical field because it reduced network
congestion while generating massive amounts of accounting
data); Thales Visionix Inc. v. United States, 850
F.3d 1343, 1345 (Fed. Cir. 2017)(claims reciting a unique
configuration of inertial sensors and the use of a
mathematical equation for calculating the location and
orientation of an object relative to a moving platform were
directed to a technological improvement, not an abstract
idea); Visual Memory, 867 F.3d at 1262 (a computer
memory system connectable to a processor and having
programmable operational characteristics allowed
interoperability with different processors and was not
directed to the abstract idea of categorical data storage).
the search for an improvement to technology does overlap with
the Alice step two analysis, courts have found it
sufficient to conclude that claims are directed to an
improvement in technology functioning, as opposed to an
abstract idea, in step one. Enfish, 822 F.3d at
contrast, the Federal Circuit has provided examples of claims
that are not, in fact, directed to an improvement in the
functioning of technology. For example, a court must look to
the specification to determine whether it discloses the
manner in which the alleged improvement is achieved.
Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d
1253, 1263-4 (Fed. Cir. 2016)(finding that the claimed
methods of delivering broadcast content to cellphones
ineligible because the specific process by which the
improvement is achieved was not disclosed, and claims were
written with high generality). Mere automation of a manual
process is also an abstract idea and not directed to an
improvement in technology. Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.
2017)(using generic technology to process a car loan that
could otherwise be done manually is abstract). Analyzing
information in a way that can be performed mentally is also
abstract. Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Moreover, claims are not directed to an improvement in
technology if the purported improvements arise solely from
the capabilities of generic technology and computer parts.
FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089,
1095 (Fed. Cir. 2016)(“While the claimed system and
method certainly purport to accelerate the process of
analyzing audit log data, the speed increase comes from the
capabilities of a general-purpose computer, rather than the
patented method itself.”). As previously discussed, a
claim must include more than conventional implementation of
generic components to qualify as an improvement to
technology. Affinity Labs, 838 F.3d at 1264-65,
(Fed. Cir. 2016); In re TLI, 823 F.3d at 612-13.
“limiting the invention to a technological environment
does ‘not make an abstract concept any less abstract
under step one.'” Berkheimer, 2018 WL
774096, at *6 (citing Intellectual Ventures I LLC v.