EDTX & NDTX Monthly Wrap-Up — March 2021


At the end of March in the Eastern District of Texas, Judge Jordan issued two motion to dismiss orders involving patent eligibility under 35 U.S.C. § 101.  These cases are discussed in further detail below.

Repifi Vendor Logistics, Inc. v. Intellicentrics, Inc. et al.

At issue in Repifi was U.S. Patent No. 10,304,268, titled "Visitor Credentialing System for an Access-Controlled Environment."  Case No. 4:20-cv-00448-SDJ, 2021 WL 1196271, at *1 (E.D. Tex. Mar. 30, 2021).  The asserted claim of the '268 Patent recites as follows:

  1. A method for credentialing visitors to an access-controlled environment by an access administrator, comprising the steps of:

(a) providing a smart-phone based credentialing platform having global positioning system (GPS) capability;

(b) providing an electronic badge having a display having electronically controlled and changeable indicia thereon, the badge adapted communicate with a smart-phone;

(c) enrolling a visitor into the credentialing platform by entering visitor information based on requirements of the administrator;

(d) approving, by the administrator, that the requirements of the step of enrolling are met;

(e) requesting, by the visitor, at least one location for which access is desired and submitting the at least one location to the administrator via the credentialing platform, said location having a pre-defined area;

(f) approving, by the administrator, the request for access at the at least one location;

(g) checking in on the smart-phone, by the visitor, via the credentialing platform, to establish check-in data including check-in time and date by the visitor, wherein the check-in data is recorded by the credentialing platform;

(h) communicating between the smart-phone and the electronic badge, indicia data for forming a display image on the display on the electronic badge;

(i) displaying on the badge display indicia showing access by the visitor is authorized to the location during the specific time interval;

(j) recording, by the credentialing platform, geo-location data of the visitor during the visitor’s presence in the pre-defined area;

(k) checking out of the system when the visitor departs the pre-defined area of the at least one location, establishing check-out data, including check-out time and date and geo-location;

(l) recording, by the credentialing platform, the check-in data, the geo-location data and the check-out data of the visitor; and

(m) removing from the badge display, the indicia showing access by the visitor is authorized.

Judge Jordan explained that the claimed method "streamlines the credentialing and check-in/out processes for visitors to access-controlled facilities" using a credentialing platform provided in the form of a smart-phone software application.  Id. at *2.  Specifically, visitors can input information and obtain approval from a facility administrator, and once approved, visitors can "use the app to request access to a pre-defined, access-controlled location," and once access is granted, "check in on the app after arriving at the facility."  Id.  The app (1) "records the check-in information"; (2) "communicates data to an electronic badge that causes the badge to reflect that the visitor is authorized"; (3) "tracks the visitor’s location and automatically checks out the visitor when the visitor leaves the facility"; and (4) "records the check-out information and communicates data to the electronic badge, causing the badge to reflect that the visitor is no longer authorized."  Id.

Analyzing step one of the Alice/Mayo test, the court concluded that claim of the '268 Patent "is directed to the abstract idea of credentialing visitors and checking them in and out of an access-controlled environment."  Id. at *5.  The court explained that "[c]redentialing and checking in visitors is a process that long predates the '268 patent" and "has been practiced ever since access-controlled facilities have existed."  Id.  The court also determined that credentialing visitors and checking them in and out of an access-controlled environment is "also a well-established business practice and a common method for organizing human activity," noting that the '268 Patent explained as much.  Id. (citing the '268 Patent at 1:11—13 ("It is a common practice to issue identification badges to employees at facilities such as hospital or other healthcare facilities, office buildings, factories, and the like.")).

Repifi argued that claim 1 was not directed to an abstract idea "because it includes an electronic badge that displays indicia that are changeable in real time based on the location of the visitor."  Id. at *6.  The court disagreed, explaining that claim 1 is "not directed to an electronic badge with indicia that change in real time; rather, the electronic badge is merely one of the steps within the broader method claimed by claim 1."  Id.

The court further explained that claim 1 "is not directed toward solving any problem in the technology itself it is directed toward making a human process more efficient" and does not "claim an improvement to the functioning of any technology—it merely claims the use of conventional technologies' already-existing functions to aid a human process."

Turning to step two, the court concluded that claim 1 "fails to supply an inventive concept sufficient to convert claim 1 into a claim over patentable subject matter."  Id. at *9.  Repifi argued that claim 1's provision of "an electronic badge with a display that changes in real time is an improvement over the prior art of providing paper badges," but the court disagreed.  Id. at *8.  The court noted that claim 1 fails to "list[] the technology or the method by which the electronic badge is able to perform these functions."  Id.  The court further determined that the elements of claim 1, when considered as an "ordered combination," fail to supply an inventive concept because "the only alleged improvements over the prior art provided by the ordered combination all stem from the automation of a historically human process."

Accordingly, the court granted the motions to dismiss, and dismissed Repifi's claims without prejudice.

AR Design Innovations LLC v. Ashley Furniture Industries, Inc. et al.

At issue in AR Design was U.S. Patent No. 7,277,572, titled "Three-Dimensional Interior Design System.  Case No. 4:20-cv-392, 2021 WL 1213551, at *1 (E.D. Tex. Mar. 30, 2021).  Representative claim 1 of the '572 recites as follows:

  1. A method in a client-server computing environment for generating and rendering a photorealistic three-dimensional (3D) perspective view of a 3D object selectively positioned within a 3D scene, the method comprising:

(a) communicably accessing a server with a client;

(b) operating with the client, a client application configured for scene editing and rendering, including a graphical user interface (GUI);

(c) displaying a 3D scene with the GUI;

(d) configuring the 3D scene for being selectively displayed in a plurality of views;

(e) retrieving at least one 3D object from the server;

(f) importing the 3D object into the 3D scene to generate a composite;

(g) manipulating the 3D object within the composite for placement and orientation;

(h) rendering a 3D image of the composite at the client;

(i) selectively reconfiguring the 3D image in real time;

(j) applying luminosity characteristics to the 3D image; and

(k) rendering, with the client application, a photorealistic 3D view of the composite image, including the luminosity characteristics.

Judge Jordan explained how the '572 Patent allows end users "'to see a manufacturer's products in full, realistic, 3D with the ability to change the texture (textile covering, finish, etc.) of the product' and 'may allow a furniture manufacturer to exhibit their sofas or chairs covered in all of the different materials offered by them.'"  Id. (quoting the '572 Patent at 7:2—7).

Analyzing step one of the Alice/Mayo test, the court concluded that claim 1 of the '572 Patent, as pleaded, "is not directed to an abstract idea and that the allegations are sufficient to plead an eligible patent."  Id. at *8.  Reaching this conclusion, the court noted the '572 Patent "is less like those patents in the cases ... involving data collection, data analysis, data transmission, data organization, data storage, etc., and more like those in the cases involving a faster, more reliable, or more usable interface—i.e., a specific improvement to the functioning of a computer."  Id. at *6.  Specifically, the court determined that "the claims at issue, as illuminated by the specification, are 'directed to' improvements to the manipulability and appearance of 3D scenes and objects, including luminosity characteristics, and the speed with which such scenes and objects may be rendered and edited."  Id. at *7.  Contrary to the defendants' argument that claim 1 is directed to the longstanding human practice of making models or constructing dioramas, the court found that the claims, as a whole, "appear to be directed to a specific process or tool for making digital dioramas—not the act of making dioramas itself."  Id.

Accordingly, the court denied the motion to dismiss.