Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Jan. 29, 2015) (Hart, Sen. J.).
Judge Hart granted defendants’ Mercedes-Benz USA’s and Daimler’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff Vehicle Intelligence & Safety’s (“VIS”) patent claims as unenforceable because they were patent ineligible pursuant to 35 U.S.C. § 101 in this patent case involving automotive safety systems.
Following the two-prong analysis set forth in Mayo and further refined in Alice, the Court first held that the asserted claims covered abstract ideas – testing operators of moving vehicles for physical or mental impairment. The Court reasoned that testing for impairment could be performed entirely within the human mind.
The Court then turned to whether the asserted claims set forth an inventive concept sufficient to make the claims patent eligible. The key claim element for each asserted claim required “expert system(s)” – a class of computer programs designed to mimic human decision-making. The Court reasoned that the expert systems were “generic computer automation” that did not amount to an inventive concept. Importantly, the claims did not require that the expert system be programed in any specific way to perform its various functions.
Claims requiring that the expert systems use one or more of various modules did not rise to the level of an inventive concept at least because it did not specify how the expert system was required to use any of the modules.
Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Mar. 13, 2014) (Hart, Sen. J.).
Judge Hart denied defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s patent infringement claims related to screening drivers for various types of impairment and “controlling operation” of the vehicle if the driver is impaired. While the parties’ briefs showed likely issues of patentability, the Court could not decide whether the claims were patent eligible without further discovery regarding how and whether computers were used in the patent-in-suit.
NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).
Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis. The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.
During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation. In response to defendant’s motion, NanoChem provided a lost profit calculation. While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert. But NanoChem was limited to the offered calculation and no other damages theories.
The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims. Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning. Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.