Shearman & Sterling secured another patent litigation victory for client Daimler AG and Mercedes-Benz USA, LLC (“MBUSA”) when the District Court for the Northern District of Illinois granted the firm’s motion for judgment on the pleadings, holding that plaintiff Vehicle Intelligence & Safety’s (“VIS”) patent is invalid as patent ineligible. The Court found the claims, covering impairment detection systems using “expert systems,” to be based on an abstract idea and that the claims did not contain an “inventive concept” sufficient to confer patent eligibility.
In 2013, VIS filed a complaint against Daimler and MBUSA alleging infringement of US Patent No. 7,394,392 (“the ‘392 patent”), relating to devices and methods for impairment detection. VIS alleged that Defendant’s Attention Assist product, which is now installed in many lines of Mercedes vehicles to provide warnings of driver drowsiness, infringed the patent. The Shearman & Sterling team was initially successful in obtaining a stay of almost all discovery pending the Court’s ruling on the firm’s initial motion and renewed motion for patent ineligibility.
In response to Defendants Motion for Judgment on the Pleadings, the Court ruled that the asserted claims of the ‘392 patent are invalid as being directed at patent-ineligible subject matter under Section 101 of the Patent Act. To be patent eligible, a claimed invention must be a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has held that there are three narrow exceptions to patent eligibility: “laws of nature, physical phenomena, and abstract ideas.” VIS’s invention fell squarely within one of these narrow exceptions recognized by the Supreme Court. In its opinion, the District Court began by stating that the patent acknowledges that the inventor did not invent impairment detection methods or devices. Instead, the patentee’s claimed that its innovation was the use of “expert systems” to provide the impairment detection. Because the District Court found the claims in the case to broadly relate to the concept of testing operators of moving equipment for any kind of physical or mental impairment, the concept qualifies as an abstract idea. The District Court then determined that the asserted claims did not set forth an inventive concept sufficient to transform the claims into a patent-eligible application of equipment impairment testing, the “expert system” for screening impairment notwithstanding.