Federal Circuit Clarifies Role Of Specification And Claim Language In Abstract Idea Analysis

In Chargepoint, Inc. v. Semaconnect, Inc., No. 2018-1739 (March 28, 2019), the Federal Circuit, in applying step one of a § 101/Alice inquiry to determine if a claim is directed to a patent-ineligible concept, clarified that “while the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus.”  Chargepoint, slip op, at 8.  While the Court reviewed the specification of the patent at issue and considered it important to understanding the problem facing the inventor, the Court concluded that “[e]ven a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims, thus preempting all use of that law or idea.”  Id., at 14.   The Court thus found under step one of Alice that “the focus of the claim is on the abstract idea of network communication for device interaction,” and then from “the claims and specification, it is clear that network communication is the only possible inventive concept,” which was insufficient for patent eligibility under Alice step two.  Id., at 15-16, 25.

Slip opinion available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1739.Opinion.3-28-2019.pdf