Computerized Price Quote Patent Held Invalid Under §101
Alice is clear that inventions drawn to automating well-known concepts are not patent-eligible. However, this area of the law becomes a bit murky when the automated concept is one that involves concrete or physical devices. The District of Minnesota recently issued an opinion bearing on the patentability of automatic price quotations for injection molds.
In the case of Proto Labs, Inc. v. ICO Products, LLC, Civil No. 15-2562 (D. Minn. July 28, 2016 Report and Recommendation on Motion to Dismiss), the court found patents directed to automatically generating a price quotation for a mold were directed to abstract ideas with no further inventive concept. The patents at issue generally related to “providing automated price quotations for molds and molded parts and contemplates the use of a computer or the internet to perform a variety of functions throughout the quotation process.” Specifically, the patents involve sending a CAD file of the mold or parts, analyzing the CAD file to determine geometric intricacies that may increase the cost for preparing the mold, and then having the customer select various parameters (number of mold cavities, surface finish and material, delivery time, etc.) that all factor in to the overall cost of the mold manufacturing process. The parameters are then run through an algorithm to provide an estimate for producing the mold.
Notably, the specifications of the patents included a description of a similar, age-old process in the Background section. For example, the Background discussed the process of visiting a mold manufacturer, providing a drawing or actual prototype to determine geometric intricacies, and discussing other parameters with the mold manufacturer to provide a price.
Based on the above, the court held the invention was directed to an abstract idea with no inventive concept. Namely, the court found the patents were directed to the abstract idea of “providing a price quotation for the manufacture of a mold or molded part.” Quoting the specification, the court found “[a]lthough the method claimed by the ‘699 Patent is largely performed on computers, human moldmakers have been quoting mold prices based on visual inspection of a customer’s design for years.” For Alice step two, the court found the patent did not improve the computer in any concrete way, but merely used conventional computer components to automate a well-known process.
Background sections can be dangerous for many reasons, including a potential admission that the information recited in the Background section constitutes prior art. This case is a good example of how the Background section can provide a road map for §101 purposes—where the Background describes an age-old concept, and the invention merely computerizes that concept to automate it. Patent drafters should therefore be careful in how they frame the invention and prior art in the Background section to avoid such a road map.
Patrick T. Muffo is an author of the Seyfarth PTAB Blog and Associate in the firm’s Chicago office.