Failure To Identify The Invention And To Explain How You Do It May Lead To Invalidity Under Section 101

• Published date: 06 October 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Ms Marina I. Miller

Integrated Technology Solutions, LLC ("ITS") alleged that products manufactured and distributed by iRacing.com Motorsport Simulations, LLC ("iRacing") infringed on U.S. Patent 10,046,241. iRacing moved to dismiss, arguing that the '241 patent was invalid under 35 U.S.C Section 101, as construed by Alice Corp. Pty. Ltd. v. CLS Bank Int'l., 573 U.S. 208 (2014),and its progeny, because the asserted claims were directed to an abstract idea and were patent-ineligible. The U.S. District Court, D. Massachusetts ("the Court") found that the claims at issue were directed at patent-ineligible concepts, and that the elements of each claim did not transform the claim into patent-eligible application, and granted the motion to dismiss.

The '241 patent relates to systems, methods, and other embodiments associated with output production. It is described as an "in-game modifier for racetrack videogames whereby evaluations of both simulated environmental conditions and player actions change the performance of the system during game play." The patented methods involve multiple systems comprised of identification, check, determination, and modification components. ITS asserted that iRacing's non-downloadable online competitive racing simulation software infringed on one or more claims of the '241 patent, that iRacing's subscription service to use the non-downloadable online simulation software induced infringement. ITS further asserted a claim of contributory infringement based on iRacing's continued sale of the subscription service for the software.

Analyzing the claims at issue, the Court first considered whether the claims were directed to a patent ineligible concept under Alice Step One. ITS argued that the claims were directed to more than just an abstract idea, because the "patent describes improved rendering techniques for maps" that "provide greater accuracy in game mechanics and allow for indirect player interaction as the rendered maps are continually modified." ITS further asserted that the temperature and tire elements in racing games were "only two of many elements in one of many invention embodiments" described in the specifications, and that "at least" the modification component was not abstract, where "one of the touchstones of abstraction is whether a person could perform the claimed steps in their head," and a human cannot modify a racetrack by determining to leave tire remnants.

iRacing contended that "the basic thrust of the independent claims is the abstract idea of simulating the impact of a racetrack surface on a vehicle's performance," and that "[e]ach claim merely enumerates a series of generic steps that describe the raw concept of this simulation, not how to perform it." The claims do not "recite any non-generic hardware that might change this result" where the "components are merely placeholders for any available generic hardware or software" and a "human could perform...