Don’t Cite Prior Art to Show the Lack of an Inventive Concept

The second prong of the Alice test is commonly abbreviated as requiring an “inventive concept.” Of course, that same nomenclature is used by many international patent laws as a synonym for nonobviousness. Can a defendant then cite prior art to show an invention lacks an “inventive concept” pursuant to Alice?

 

The Eastern District of Texas was not persuaded by this argument in the case of Chrimar Systems, Inc. v. Alcatel-Lucent USA, Inc. et al. (Civil No. 6:15-cv-163-JDL, July 29, 2016 Order on Motion for Summary Judgment). The Chrimar case involved patents directed to wireless devices that are controlled by a remote module. The module measures an impedance of each of the devices without using network bandwidth to efficiently identify and manage remote devices.