Chargepoint, Inc. v. Semaconnect, Inc. , 920 F.3d 759 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
CHARGEPOINT, INC.,
Plaintiff-Appellant
v.
SEMACONNECT, INC.,
Defendant-Appellee
______________________
2018-1739
______________________
Appeal from the United States District Court for the
District of Maryland in No. 8:17-cv-03717-MJG, Senior
Judge Marvin J. Garbis.
______________________
Decided: March 28, 2019
______________________
STEFFEN NATHANAEL JOHNSON, Winston & Strawn
LLP, Washington, DC, argued for plaintiff-appellant. Also
represented by ZACHARY BENJAMIN COHEN, CHARLES B.
KLEIN, ANDREW CURTIS NICHOLS; JAMES LIN, MICHAEL
RUECKHEIM, Menlo Park, CA; DAVID SPENCER BLOCH, San
Francisco, CA.
ALAN WHITEHURST, Quinn Emanuel Urquhart & Sulli-
van, LLP, Washington, DC, argued for defendant-appellee.
Also represented by DEEPA ACHARYA, MARISSA RACHEL
DUCCA; SEAN S. PAK, OGNJEN ZIVOJNOVIC, San Francisco,
CA.
2 CHARGEPOINT, INC. v. SEMACONNECT, INC.
______________________
Before PROST, Chief Judge, REYNA and TARANTO,
Circuit Judges.
PROST, Chief Judge.
Appellant ChargePoint, Inc. appeals the decision of the
U.S. District Court for the District of Maryland, which dis-
missed ChargePoint’s complaint under Federal Rule of
Civil Procedure 12(b)(6). The district court held that the
eight patent claims asserted by ChargePoint were ineligi-
ble for patenting under 35 U.S.C. § 101. We affirm.
I
The technology at issue in this patent infringement
case pertains to charging stations for electric vehicles. The
battery in an electric vehicle is recharged by connecting the
vehicle to an electrical outlet. U.S. Patent No. 8,138,715col. 1 ll. 20–24 (“the ʼ715 patent”). At the time the patent
application was filed, this process “typically require[d]
hours and [was] often done overnight or while the electric
vehicle [was] parked for a significant time.” Id. col. 1
ll. 24–26.
Businesses such as restaurants, apartments, and shop-
ping centers have installed electric vehicle charging sta-
tions for the convenience of their customers. These site
hosts manage their charging stations in different ways.
For example, a shopping center may prefer to offer free ve-
hicle charging to its customers to encourage customers to
continue shopping. Meanwhile, an apartment complex
might limit access to its charging stations to ensure that
only tenants can use those stations.
Utility companies have different concerns in mind.
Generally, the supply of electricity available from a power
grid may vary, and in some cases the grid may lack suffi-
cient electricity to meet demand. Id. col. 1 ll. 39–41. Dur-
ing such periods when power supply is low compared to
CHARGEPOINT, INC. v. SEMACONNECT, INC. 3
demand, supply to certain customers or services may be re-
duced based on a preplanned load prioritization scheme.
Id. col. 1 ll. 44–47. The idea of reducing electricity con-
sumption during periods of high demand is one form of
what is referred to as “demand response.” Id. col. 1 ll. 43–
44. Demand response may also involve increasing demand
during periods when demand is low compared to supply, by
reducing the cost of electricity. Id. col. 1 ll. 47–50.
In addition to pulling electricity from a local electricity
grid, electric vehicles may also supply electricity to the
grid. Id. col. 1 ll. 58–61. This is referred to as vehicle-to-
grid transfer or V2G. Id. Vehicle-to-grid transfer can be
helpful during periods of high demand. Id. col. 1 ll. 64–66.
ChargePoint contends that its inventors created im-
proved charging stations that address the various needs in-
herent in electric vehicle charging. This was accomplished
by creating networked charging stations. According to
ChargePoint, this network connectivity allows the stations
to be managed from a central location, allows drivers to lo-
cate charging stations in advance, and allows all users to
interact intelligently with the electricity grid.
ChargePoint alleged in its complaint that it was “the
first company to propose networked [electric vehicle] charg-
ing infrastructure, in the face of widespread industry skep-
ticism, and the first to patent networked [electric vehicle]
charging technology.” J.A. 83 ¶ 6. It further alleged that
the asserted patents “describe a paradigm-shifting concept
of how to charge electric vehicles in a dynamic, networked
environment—a dramatic departure from the gas station-
centric ideas that prevailed before ChargePoint’s innova-
tions.” J.A. 84 ¶ 9.
According to ChargePoint, its inventions enabled indi-
vidual charging stations to be networked together to allow
site hosts, drivers, and utility companies to communicate
in real time to address the needs and preferences of each
constituency. For example, the patents describe the ability
4 CHARGEPOINT, INC. v. SEMACONNECT, INC.
to locate available charging stations remotely. See, e.g.,
ʼ715 patent col. 4 ll. 59–65. The patents also explain that
the availability of electricity may be based on power grid
data provided by a utility company. See, e.g., id. col. 4
ll. 45–58. And the patents suggest that drivers can choose
to transfer power from their vehicles to the power grid dur-
ing periods of high demand. Id. col. 4 ll. 54–58. These ca-
pabilities are described in the four patents at issue in this
appeal.
A
There are four patents at issue in this case: U.S. Pa-
tent Nos. 8,138,715; 8,432,131 (“the ʼ131 patent”);
8,450,967 (“the ʼ967 patent”); and 7,956,570 (“the ʼ570 pa-
tent”). The patents share the same specification.
These patents generally describe electric vehicle charg-
ing stations that are connected to a network. The stations
are connected to the local power grid, and electric vehicles
connect to the stations by way of an electrical connector.
ʼ715 patent col. 5 ll. 38–42.
ChargePoint asserted claims 1 and 2 of the ʼ715 patent
in this case. J.A. 98–99 ¶¶ 49–50 (Compl.). These claims
recite an apparatus that is controlled by a remote server,
where the server controls whether electricity is flowing.
Claim 2 adds a component that physically connects the
charging station to an electric vehicle and that can activate
or deactivate charging at the connection.
As for the ʼ131 patent, ChargePoint asserted claims 1
and 8. J.A. 101–02 ¶¶ 60–61 (Compl.). Claim 1 specifies
that the apparatus can modify electricity flow based on de-
mand response communications received from the server.
With respect to the ʼ967 patent, ChargePoint asserted
claims 1 and 2. J.A. 104, 107 ¶¶ 71–72 (Compl.). These
claims are method claims related to using the network-con-
trolled charging stations. They also incorporate the idea of
demand response.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 5
Finally, regarding the ʼ570 patent, ChargePoint as-
serted claims 31 and 32. J.A. 91, 96 ¶¶ 38–39 (Compl.).
These claims describe a network-controlled charging sta-
tion system.
B
ChargePoint sued SemaConnect for patent infringe-
ment in December 2017. Soon after, ChargePoint filed a
motion for emergency injunctive relief. The district court
denied injunctive relief and ordered expedited briefing on
SemaConnect’s Rule 12(b)(6) motion based on § 101. The
court granted SemaConnect’s motion to dismiss under Rule
12(b)(6) with prejudice, holding each asserted claim ineli-
gible for patenting under § 101. ChargePoint, Inc. v. Sema-
Connect, Inc., No. 17-3717, 2018 WL 1471685 (D. Md. Mar.
23, 2018).
The district court entered final judgment in favor of
SemaConnect on March 23, 2018. ChargePoint timely ap-
pealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II
We review a district court’s grant of a Rule 12(b)(6) mo-
tion under the law of the regional circuit. Aatrix Software,
Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1124
(Fed. Cir. 2018). Applying Fourth Circuit law, we review a
district court’s dismissal under Rule 12(b)(6) de novo, we
assume the truth of the complaint’s factual allegations, and
we draw all reasonable inferences in favor of the plaintiff.
Semenova v. Md. Transit Admin., 845 F.3d 564, 567 (4th
Cir. 2017) (citing Belmora LLC v. Bayer Consumer Care
AG, 819 F.3d 697, 702 (4th Cir. 2016)). 1
1 In its “Standard of Review” section of its brief,
ChargePoint cites Fourth Circuit case law suggesting that
motions under Rule 12(b)(6) generally cannot reach the
merits of affirmative defenses unless all facts necessary to
6 CHARGEPOINT, INC. v. SEMACONNECT, INC.
Subject matter eligibility under § 101 may be deter-
mined at the Rule 12(b)(6) stage of a case. Aatrix Software,
882 F.3d at 1125. Dismissal at this early stage, however,
is appropriate “only when there are no factual allegations
that, taken as true, prevent resolving the eligibility ques-
tion as a matter of law.” Id.
Section 101 of the Patent Act delineates the subject
matter eligible for patent protection. Under that section,
“[w]hoever invents or discovers any new and useful pro-
cess, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a pa-
tent therefor, subject to the conditions and requirements of
this title.” 35 U.S.C. § 101. This provision, however, con-
tains longstanding judicial exceptions, which provide that
laws of nature, natural phenomena, and abstract ideas are
not eligible for patenting. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In analyzing whether the claims are patent eligible, we
employ the two-step analysis articulated in Mayo Collabo-
rative Services v. Prometheus Laboratories, Inc., 566 U.S.
66 (2012), and further delineated in Alice. “First, we deter-
mine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
the claims are directed to a patent ineligible concept, we
begin the “search for an ‘inventive concept’—i.e., an ele-
ment or combination of elements that is ‘sufficient to en-
sure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Id.
that defense clearly appear on the face of the complaint.
Appellant’s Br. 22. To the extent ChargePoint intended to
make a procedural argument related to this case law, we
hold that argument forfeited, as it is not addressed else-
where in ChargePoint’s briefing.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 7
at 217–18 (internal quotation marks omitted) (quoting
Mayo, 566 U.S. at 72–73).
A
At step one of the Mayo/Alice inquiry, “[w]e must first
determine whether the claims at issue are directed to a pa-
tent-ineligible concept.” Id. at 218. We recognize that “[a]t
some level, ‘all inventions . . . embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or ab-
stract ideas.’” Id. at 217 (quoting Mayo, 566 U.S. at 71).
Thus, at step one, “it is not enough to merely identify a pa-
tent-ineligible concept underlying the claim; we must de-
termine whether that patent-ineligible concept is what the
claim is ‘directed to.’” Thales Visionix Inc. v. United States,
850 F.3d 1343, 1349 (Fed. Cir. 2017) (quoting Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed.
Cir. 2016)). We have described this step one inquiry “as
looking at the ‘focus’ of the claims.” Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016 (quoting
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36
(Fed. Cir. 2016)). In this first step, we consider the claims
“in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter.” Internet Pa-
tents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015).
Our cases have crafted various tools to analyze
whether a claim is “directed to” ineligible subject matter.
For example, we have found the specification helpful in il-
luminating what a claim is “directed to.” See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611–12 (Fed.
Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1376 (Fed. Cir. 2015); see also Parker v. Flook,
437 U.S. 584, 586 (1978) (noting that the patent application
provided nothing more than a formula for computing an
alarm limit); cf. United States v. Adams, 383 U.S. 39, 49
(1966) (“[I]t is fundamental that claims are to be construed
in the light of the specifications and both are to be read
8 CHARGEPOINT, INC. v. SEMACONNECT, INC.
with a view to ascertaining the invention.”). But while the
specification may help illuminate the true focus of a claim,
when analyzing patent eligibility, reliance on the specifica-
tion must always yield to the claim language in identifying
that focus. This is because “the concern that drives” the
judicial exceptions to patentability is “one of pre-emption,”
Alice, 573 U.S. at 216, and the claim language defines the
breadth of each claim, see Graver Tank & Mfg. Co. v. Linde
Air Prods. Co., 336 U.S. 271, 277 (1949) (“[I]t is the claim
which measures the grant to the patentee.”). Thus, as part
of our “directed to” analysis, we also consider whether a
claim is truly focused on an abstract idea (or other ineligi-
ble matter), whose use the patent law does not authorize
anyone to preempt. See Mayo, 566 U.S. at 72; see also Alice,
573 U.S. at 223 (noting “the pre-emption concern that un-
dergirds our § 101 jurisprudence”); Ariosa Diagnostics, 788
F.3d at 1379 (“The Supreme Court has made clear that the
principle of preemption is the basis for the judicial excep-
tions to patentability.”).
With these tools in mind, we turn to the claims at issue
in this case. We address each claim separately, as the par-
ties have not designated a representative claim.
1
Claims 1 and 2 of the ʼ715 patent are both apparatus
claims. They recite:
1. An apparatus, comprising:
a control device to turn electric supply on
and off to enable and disable charge trans-
fer for electric vehicles;
a transceiver to communicate requests for
charge transfer with a remote server and
receive communications from the remote
server via a data control unit that is con-
nected to the remote server through a wide
area network; and
CHARGEPOINT, INC. v. SEMACONNECT, INC. 9
a controller, coupled with the control device
and the transceiver, to cause the control de-
vice to turn the electric supply on based on
communication from the remote server.
2. The apparatus of claim 1, further comprising an
electrical coupler to make a connection with an
electric vehicle, wherein the control device is to
turn electric supply on and off by switching the
electric coupler on and off.
ʼ715 patent claims 1–2.
It is clear from the language of claim 1 that the claim
involves an abstract idea—namely, the abstract idea of
communicating requests to a remote server and receiving
communications from that server, i.e., communication over
a network. But at step one, “it is not enough to merely
identify a patent-ineligible concept underlying the claim;
we must determine whether that patent-ineligible concept
is what the claim is ‘directed to.’” Thales Visionix, 850 F.3d
at 1349 (emphasis added) (quoting Rapid Litig. Mgmt., 827
F.3d at 1050). We therefore continue our analysis to deter-
mine whether the focus of claim 1, as a whole, is the ab-
stract idea. As explained below, we conclude that it is.
While “[t]he § 101 inquiry must focus on the language
of the Asserted Claims themselves,” Synopsys, Inc. v. Men-
tor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016),
the specification may nonetheless be useful in illuminating
whether the claims are “directed to” the identified abstract
idea. See In re TLI Commc’ns, 823 F.3d at 611–12; Ariosa
Diagnostics, 788 F.3d at 1376. For example, in some cases
the “directed to” inquiry may require claim construction,
which will often involve consideration of the specification.
See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (“[C]laims ‘must be read in view of the spec-
ification, of which they are a part.’” (quoting Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995)).
10 CHARGEPOINT, INC. v. SEMACONNECT, INC.
The “directed to” inquiry may also involve looking to
the specification to understand “the problem facing the in-
ventor” and, ultimately, what the patent describes as the
invention. See In re TLI Commc’ns, 823 F.3d at 612; Ariosa
Diagnostics, 788 F.3d at 1376 (in the step one analysis,
pointing to statements from the specification that sup-
ported the conclusion that the natural phenomenon
claimed was the key discovery described in the patent). For
example, in In re TLI Communications we held ineligible a
claim to a method for recording and administering digital
images using a phone. 823 F.3d at 610. In our step one
analysis, we explained that “the problem facing the inven-
tor was not how to combine a camera with a cellular tele-
phone, how to transmit images via a cellular network, or
even how to append classification information to that
data.” Id. at 612. Instead, quoting the specification, we
explained that “the inventor sought to ‘provid[e] for record-
ing, administration and archiving of digital images simply,
fast and in such way that the information therefore may be
easily tracked.’” Id.; see id. at 611 (noting that “the speci-
fication’s emphasis” that the present invention relates to
methods for recording, communicating, and administering
a digital image “underscores that [the claim] is directed to
an abstract concept”). We also pointed to the specification
to explain why the tangible components recited in the
method claim were merely “conduit[s] for the abstract
idea.” Id. at 612. We reached that conclusion in part be-
cause the specification “fail[ed] to provide any technical de-
tails for the tangible components, but instead
predominately describe[d] the system and methods in
purely functional terms.” Id.; see id. at 612–13 (concluding
that “the focus of the patentee and of the claims was not
on” improved hardware because the specification described
the functionality of the hardware “in vague terms without
any meaningful limitations”).
In this case, ChargePoint has not expressed a need for
claim construction, so we need not look to the specification
CHARGEPOINT, INC. v. SEMACONNECT, INC. 11
for that purpose. We do, however, view the specification as
useful in understanding “the problem facing the inventor”
as well as what the patent describes as the invention.
Here, the specification suggests that claim 1 is directed to
the abstract idea of communication over a network to in-
teract with a device connected to the network. The problem
identified by the patentee, as stated in the specification,
was the lack of a communication network that would allow
drivers, businesses, and utility companies to interact effi-
ciently with the charging stations. For example, the spec-
ification states that “[t]here is a need for a communication
network which facilitates finding the recharging facility,
controlling the facility, and paying for the electricity con-
sumed.” ʼ715 patent col. 1 ll. 35–38. Likewise, it states
that “[t]here is a need for an efficient communication net-
work for managing peak load leveling using Demand Re-
sponse and V2G.” Id. col. 2 ll. 8–10. Looking to future
needs, the specification anticipates that “there will be a
need for a system for collection of taxes and consumption
information.” Id. col. 2 ll. 18–20. From these statements,
it is clear that the problem perceived by the patentee was
a lack of a communication network for these charging sta-
tions, which limited the ability to efficiently operate them
from a business perspective.
The specification also makes clear—by what it states
and what it does not—that the invention of the ʼ715 patent
is the idea of network-controlled charging stations. 2 The
2 At step one, we look to what the specification de-
scribes as the invention only to help understand the focus
of the claims. We are not analyzing, for example, whether
the claimed invention is actually novel. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(“[A]ny novelty in implementation of the idea is a factor to
be considered only in the second step of the Alice analy-
sis.”).
12 CHARGEPOINT, INC. v. SEMACONNECT, INC.
summary of the invention states: “A system for network-
controlled charging of electric vehicles and the network-
controlled electrical outlets used in this system are de-
scribed herein.” Id. col. 3 ll. 37–39. The specification then
goes on to describe a networked system in which, among
other things, drivers can determine whether a charging
station is available, drivers can pay to charge their vehi-
cles, and utility companies can supply information to
charging stations from a demand response system. 3 Nota-
bly, however, the specification never suggests that the
charging station itself is improved from a technical per-
spective, or that it would operate differently than it other-
wise could. Nor does the specification suggest that the
invention involved overcoming some sort of technical diffi-
culty in adding networking capability to the charging sta-
tions.
In short, looking at the problem identified in the pa-
tent, as well as the way the patent describes the invention,
the specification suggests that the invention of the patent
is nothing more than the abstract idea of communication
over a network for interacting with a device, applied to the
context of electric vehicle charging stations. See Alice, 573
U.S. at 222 (“[T]he prohibition against patenting abstract
ideas cannot be circumvented by attempting to limit the
use of [the idea] to a particular technological environment.”
(alteration in original) (quoting Bilski v. Kappos, 561 U.S.
593, 610–11(2010))). Although this is not necessarily
3 Although not every type of communication that we
have discussed as being in the specification (such as com-
munications based on demand response) is mentioned in
claim 1, we include these details because they directly cor-
respond to what is expressly included in claim 1—commu-
nication over a network. These details further illustrate
that the invention is the addition of networking capability
and the various communication possibilities it brings.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 13
dispositive of the “directed to” inquiry, it strongly suggests
that the abstract idea identified in claim 1 may indeed be
the focus of that claim.
With these indications from the specification in mind,
we return to the claim language itself to consider the extent
to which the claim would preempt building blocks of sci-
ence and technology. See Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (“At step one of the Alice framework, it is often useful
to determine the breadth of the claims in order to deter-
mine whether the claims extend to cover a ‘fundamental
. . . practice long prevalent in our system . . . .’” (quoting Al-
ice, 573 U.S. at 219)). 4 We agree with SemaConnect that,
based on the claim language, claim 1 would preempt the
use of any networked charging stations. See Appellee’s
Br. 47–48. ChargePoint’s arguments to the contrary are
unconvincing, as ChargePoint merely states that the claim
“recites specific, narrowing limitations arranged in a par-
ticular manner.” Reply Br. 21. We are unpersuaded. The
breadth with which this claim is written further indicates
that the claim is directed to the abstract idea of communi-
cation over a network for device interaction. See Ariosa Di-
agnostics, 788 F.3d at 1379 (“[P]reemption may signal
patent ineligible subject matter . . . .”).
The breadth of the claim language here illustrates why
any reliance on the specification in the § 101 analysis must
always yield to the claim language. Ultimately, “[t]he § 101
inquiry must focus on the language of the Asserted Claims
4 We have also considered preemption at step two of
the analysis. See BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016);
see also Alice, 573 U.S. at 223 (mentioning the underlying
concern of preemption in the step two portion of the analy-
sis).
14 CHARGEPOINT, INC. v. SEMACONNECT, INC.
themselves,” Synopsys, 839 F.3d at 1149, and the specifica-
tion cannot be used to import details from the specification
if those details are not claimed. Even a specification full of
technical details about a physical invention may nonethe-
less conclude with claims that claim nothing more than the
broad law or abstract idea underlying the claims, thus
preempting all use of that law or idea. This was the case
in O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853). 5 In Morse,
the Court upheld claims related to the details of Samuel
Morse’s invention of the electromagnetic telegraph, but in-
validated a claim for the use of “electromagnetism, how-
ever developed for marking or printing intelligible
characters, signs, or letters, at any distances.” Id. at 112.
The Court expressed concern that such a broad claim would
cover any application of printing at a distance via electro-
magnetism regardless of whether those applications used
the invention in the patent. Id. at 113.
A similar scenario arose in Wyeth v. Stone, 30 F. Cas.
723 (C.C.D. Mass. 1840) (No. 18,107). There, the patent
described the inventor’s machine for cutting ice in great de-
tail. But Justice Story, riding circuit, held that one claim
effectively “claim[ed] an exclusive title to the art of cutting
ice by means of any power, other than human power.” Id.
at 727. He reasoned that “[s]uch a claim is utterly unmain-
tainable” because “[i]t is a claim for an art or principle in
the abstract, and not for any particular method or machin-
ery, by which ice is to be cut.” Id.5 Although we have referenced Morse in other con-
texts, such as written description, see Univ. of Rochester v.
G.D. Searle & Co., 358 F.3d 916, 929 n.9 (Fed. Cir. 2004),
Morse is also relevant to the § 101 analysis. Indeed, the
Supreme Court has discussed Morse in many of its § 101
opinions. Alice, 573 U.S. at 216; Mayo, 566 U.S. at 72, 85;
Flook, 437 U.S. at 592; Gottschalk v. Benson, 409 U.S. 63,
68 (1972).
CHARGEPOINT, INC. v. SEMACONNECT, INC. 15
As we explained in Interval Licensing LLC v. AOL, Inc.,
in Morse and Wyeth, each inventor “lost a claim that en-
compassed all solutions for achieving a desired result” be-
cause those claims “were drafted in such a result-oriented
way that they amounted to encompassing the ‘principle in
the abstract’ no matter how implemented.” 896 F.3d 1335,
1343 (Fed. Cir. 2018). In our view, this is effectively what
ChargePoint has done in this case. Even if ChargePoint’s
specification had provided, for example, a technical expla-
nation of how to enable communication over a network for
device interaction (which, as discussed above, it did not),
the claim language here would not require those details.
Instead, the broad claim language would cover any mecha-
nism for implementing network communication on a charg-
ing station, thus preempting the entire industry’s ability to
use networked charging stations. This confirms that
claim 1 is indeed “directed to” the abstract idea of commu-
nication over a network to interact with network-attached
devices.
We conclude our “directed to” analysis by addressing
ChargePoint’s argument that the claims asserted are pa-
tent eligible because the claimed invention “build[s] a bet-
ter machine.” Appellant’s Br. 24, 29. We are not
persuaded. Claim 1 indicates that the abstract idea is as-
sociated with a physical machine that is quite tangible—
an electric vehicle charging station. Claim 2 goes further,
explaining that a vehicle may be connected to the appa-
ratus via an electrical coupler. But as the Supreme Court
indicated in Alice, whether a device is “a tangible system
(in § 101 terms, a ‘machine’)” is not dispositive. See 573
U.S. at 224; In re TLI Commc’ns, 823 F.3d at 611 (“[N]ot
every claim that recites concrete, tangible components es-
capes the reach of the abstract-idea inquiry.”). Resolving
the § 101 inquiry based on such an argument “would make
the determination of patent eligibility ‘depend simply on
the draftsman’s art.’” Alice, 573 U.S. at 224 (quoting Flook,
473 U.S. at 593). As discussed above, the claim language
16 CHARGEPOINT, INC. v. SEMACONNECT, INC.
and the specification indicate that the focus of the claim is
on the abstract idea of network communication for device
interaction.
In short, the inventors here had the good idea to add
networking capabilities to existing charging stations to fa-
cilitate various business interactions. But that is where
they stopped, and that is all they patented. We therefore
hold that claim 1 is “directed to” an abstract idea.
As to dependent claim 2, the additional limitation of an
“electrical coupler to make a connection with an electric ve-
hicle” does not alter our step one analysis. The character
of claim 2, as a whole, remains directed to the abstract idea
of communication over a network to interact with a device,
applied in the context of charging stations.
2
Claims 1 and 8 of the ʼ131 patent are also apparatus
claims. They recite:
1. An apparatus, comprising:
a control device to control application of
charge transfer for an electric vehicle;
a transceiver to communicate with a re-
mote server via a data control unit that is
connected to the remote server through a
wide area network and receive communica-
tions from the remote server, wherein the
received communications include commu-
nications as part of a demand response sys-
tem; and
a controller, coupled with the control device
and the transceiver, to cause the control de-
vice to modify the application of charge
transfer based on the communications re-
ceived as part of the demand response sys-
tem.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 17
...
8. The apparatus of claim 1, wherein the communi-
cations received as part of the demand response
system include power grid load data, and wherein
the controller is further to manage charge transfer
based on the received power grid load data.
ʼ131 patent claims 1 and 8.
Claim 1 of the ʼ131 patent is almost identical to claim 1
of the ʼ715 patent. The key differences are that the appa-
ratus in claim 1 of the ʼ131 patent does not make requests
for charge transfer (it only receives them) and that the elec-
tricity supply is modified “based on the communications re-
ceived as part of the demand response system.” ʼ131 patent
claim 1. Because of the similarity to claim 1 of the ʼ715
patent, we incorporate our analysis of that claim and add
additional comments only as necessary.
ChargePoint contends that claims 1 and 8 of the ʼ131
patent teach “a charging station with improved technical
features that enable it to adjust the amount of electricity
delivered to cars based on demand-response communica-
tions with utilities.” Reply Br. 5. To the extent Charge-
Point is arguing that modification itself is an improvement,
nothing in the specification explains from a technical per-
spective how that modification occurs. And the fact that
the electricity flow is modified based on demand response
principles does nothing to make this claim directed to
something other than the abstract idea. Demand response
is itself an abstract concept—a familiar business choice to
alter terms of dealing to help match supply and demand.
See ʼ131 patent col. 1 ll. 45–52 (“Demand Response is a
mechanism for reducing consumption of electricity during
periods of high demand. . . . Demand Response may also
be used to increase demand at times of high electricity pro-
duction. For example, the cost of electricity may be reduced
during periods of low demand.”). As we have said before,
“[a]dding one abstract idea . . . to another abstract idea . . .
18 CHARGEPOINT, INC. v. SEMACONNECT, INC.
does not render the claim non-abstract.” RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017), cert.
denied, 138 S. Ct. 672 (2018). Moreover, demand response
as used in these claims merely refers to the content of the
communications received by the charging station. We
therefore conclude that claims 1 and 8 are also directed to
the abstract idea of communicating over a network.
3
Claims 1 and 2 of the ʼ967 patent are method claims
written from the perspective of the server that communi-
cates with the charging stations. The claims recite:
1. A method in a server of a network-controlled
charging system for electric vehicles, the method
comprising:
receiving a request for charge transfer for
an electric vehicle at a network-controlled
charge transfer device;
determining whether to enable charge
transfer;
responsive to determining to enable charge
transfer, transmitting a communication for
the network-controlled charge transfer de-
vice that indicates to the network-con-
trolled charge transfer device to enable
charge transfer; and
transmitting a communication for the net-
work-controlled charge transfer device to
modify application of charge transfer as
part of a demand response system.
2. The method of claim 1, wherein determining
whether to enable charge transfer includes validat-
ing a payment source for the charge transfer.
ʼ967 patent claims 1 and 2.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 19
These claims are similar to those discussed above.
With respect to these claims, ChargePoint again focuses its
arguments on the ability to modify an electric vehicle
charging station’s operation based on a demand response
business policy. See Reply Br. 6. But, as explained above
with respect to the ʼ131 patent, the patent never discusses
any technical details regarding how to modify electricity
flow, and the fact that any modifications are made in re-
sponse to a demand response policy merely adds one ab-
stract concept to another.
The additional limitation in claim 2 regarding validat-
ing a payment source merely provides content for what oc-
curs during determination of whether to enable charge
transfer. This does nothing to alter the character of that
claim as a whole.
We thus conclude that claims 1 and 2 of the ʼ967 patent
are directed to the abstract idea of communicating over a
network.
4
Claims 31 and 32 of the ʼ570 patent claim “[a] network-
controlled charge transfer system for electric vehicles.”
The claims recite:
31. A network-controlled charge transfer system
for electric vehicles comprising:
a server;
a data control unit connected to a wide area
network for access to said server; and
a charge transfer device, remote from said
server and said data control unit, compris-
ing:
an electrical receptacle configured to re-
ceive an electrical connector for recharging
an electric vehicle;
20 CHARGEPOINT, INC. v. SEMACONNECT, INC.
an electric power line connecting said re-
ceptacle to a local power grid;
a control device on said electric power line,
for switching said receptacle on and off;
a current measuring device on said electric
power line, for measuring current flowing
through said receptacle;
a controller configured to operate said con-
trol device and to monitor the output from
said current measuring device;
a local area network transceiver connected
to said controller, said local area network
transceiver being configured to connect
said controller to said data control unit;
and
a communication device connected to said
controller, said communication device be-
ing configured to connect said controller to
a mobile wireless communication device,
for communication between the operator of
said electric vehicle and said controller.
32. A system as in claim 31, wherein said wide area
network is the Internet.
ʼ570 patent claims 31 and 32.
Although these claims are in a different form than
claim 1 of the ʼ715 patent, we again find our analysis of
that claim applicable. ChargePoint contends that the var-
ious physical components in claims 31 and 32 show that the
claims “do not recite the general concept of remote access
or control, but rather a concrete arrangement of compo-
nents that enables users and site hosts to access and con-
trol electric-vehicle charging stations.” Reply Br. 7. But
the specification does not suggest that the inventors’ dis-
covery was the particular arrangement of components
CHARGEPOINT, INC. v. SEMACONNECT, INC. 21
claimed. And although ChargePoint accuses SemaConnect
of giving “short shrift to improvements like the ‘current
measuring device’ and ‘communication device’ to connect a
‘mobile wireless communication device,’” see Reply Br. 7,
there is no indication that the invention of the ʼ570 patent
was intended to improve those particular components or
that the inventors viewed the combination of those compo-
nents as their invention. The only improvement alleged is
use of the concept of network communication to interact
with the particular devices. This remains the focus of these
two claims, thus making both directed to an abstract idea.
5
In short, while the eight claims on appeal vary in some
respects, they are all directed to the abstract idea of com-
municating over a network for device interaction. Commu-
nication over a network for that purpose has been and
continues to be a “building block of the modern economy.”
See Alice, 573 U.S. at 220 (characterizing the use of a clear-
ing house in Bilski as “a building block of the modern econ-
omy”). As with the practice of intermediated settlement in
Bilski, this “is an ‘abstract idea’ beyond the scope of § 101,”
id., and the asserted claims are directed to that abstract
idea.
B
At step two of the Alice inquiry—the search for an in-
ventive concept—we “consider the elements of each claim
both individually and ‘as an ordered combination’ to deter-
mine whether the additional elements ‘transform the na-
ture of the claim’ into a patent-eligible application.” Id. at
217 (quoting Mayo, 566 U.S. at 78–79). “[P]atentees who
adequately allege their claims contain inventive concepts
survive a § 101 eligibility analysis under Rule 12(b)(6).”
Aatrix Software, 882 F.3d at 1126–27.
Where a claim is directed to an abstract idea, the claim
must include “‘additional features’ to ensure ‘that the
22 CHARGEPOINT, INC. v. SEMACONNECT, INC.
[claim] is more than a drafting effort designed to monopo-
lize the [abstract idea].” Alice, 573 U.S. at 221 (alteration
in original) (quoting Mayo, 566 U.S. at 77). These addi-
tional features cannot simply be “‘well-understood, routine,
conventional activit[ies]’ previously known to the indus-
try.” Id. (alteration in original) (quoting Mayo, 566 U.S. at
79). Indeed, adding novel or non-routine components is not
necessarily enough to survive a § 101 challenge. See Ultra-
mercial, 772 F.3d at 715 (disagreeing with the patent
owner’s argument that “the addition of merely novel or
non-routine components to the claimed idea necessarily
turns an abstraction into something concrete”). Instead,
the inventive concept must be “sufficient to ensure that the
patent in practice amounts to significantly more” than a
patent on the abstract idea. See Mayo, 566 U.S. at 72–73.
In other words, “transformation into a patent-eligible ap-
plication requires ‘more than simply stat[ing] the [abstract
idea] while adding the words “apply it.”’” Alice, 573 U.S. at
221 (quoting Mayo, 566 U.S. at 72); see Mayo, 566 U.S. at
77 (asking whether the claims “add enough”).
Whether a claim “supplies an inventive concept that
renders a claim ‘significantly more’ than an abstract idea
to which it is directed is a question of law” that may include
underlying factual determinations. BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). For
example, within the overall step two analysis, “whether a
claim element or combination of elements is well-under-
stood, routine and conventional to a skilled artisan in the
relevant field is a question of fact” that “must be proven by
clear and convincing evidence.” Berkheimer v. HP Inc., 881
F.3d 1360, 1368 (Fed. Cir. 2018).
Here, ChargePoint argues that it presented sufficient
factual allegations to preclude dismissal at the Rule
12(b)(6) stage. Appellant’s Br. 56, 58–64. Specifically,
ChargePoint argues that its patents represent an uncon-
ventional solution to technological problems in the field,
and thus contain an inventive concept.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 23
The problems in the art identified by ChargePoint are,
generally: the sparse availability of charging stations and
the need for more widespread stations; the need for a com-
munication network that facilitates finding an available
charging station, controlling the station, and paying for
electricity; and the need for real time communication to ef-
fectively implement demand response and vehicle-to-grid
transfer. See Appellant’s Br. 59–61 (listing statements
from the specification discussing problems in the art).
ChargePoint contends that it solved these problems in
an unconventional way through: (a) the ability to turn elec-
tric supply on based on communications from a remote
server; (b) a “network-controlled” charging system; and
(c) a charging station that receives communication from a
remote server, including communications made to imple-
ment a demand response policy. Appellant’s Br. 59. To
support the unconventional nature of these alleged im-
provements, ChargePoint relies on allegations in its com-
plaint, which state that ChargePoint’s patents “describe a
paradigm-shifting concept of how to charge electric vehi-
cles in a dynamic, networked environment,” and that
ChargePoint was “the first company to propose networked
[electric vehicle] charging infrastructure, in the face of
widespread industry skepticism, and the first to patent
networked [electric vehicle] charging technology.” Id. at 62
(citing J.A. 83–84 ¶¶ 6, 9).
In essence, the alleged “inventive concept” that solves
problems identified in the field is that the charging stations
are network-controlled. But network control is the abstract
idea itself, and “a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech, 899 F.3d at 1290.
In addition to the general arguments above, Charge-
Point highlights certain aspects of each asserted claim. We
address each argument in turn. First, with respect to
24 CHARGEPOINT, INC. v. SEMACONNECT, INC.
claims 1 and 2 of the ʼ715 patent, as well as claims 31 and
32 of the ʼ570 patent, ChargePoint points to the ability to
operate charging stations remotely as solving a problem in
the field. Reply Br. 27–28. This, again, merely mirrors the
abstract idea itself and thus cannot supply an inventive
concept. See BSG Tech, 899 F.3d at 1290.
Turning to claims 1 and 8 of the ʼ131 patent, as well as
claims 1 and 2 of the ʼ967 patent, ChargePoint contends
that these claims capture technical improvements related
to demand response. Reply Br. 27. ChargePoint disputes
the district court’s conclusion that “the combination of con-
necting generic networking equipment to a charging device
to carry out a demand response plan already existed and
was well-understood, routine, and conventional.” J.A. 63.
But, as the district court pointed out, the “Background of
the Invention” section of the specification demonstrates
that demand response has been in use in other consumer
services, such as with air conditioning and lighting, which
may be reduced during periods of high demand. See ʼ131
patent col. 1 ll. 41–52. Indeed, demand response is simply
a familiar business choice of terms of dealing to help match
supply and demand. This cannot supply an inventive con-
cept in this case.
Despite ChargePoint’s reliance on BASCOM, the
claims in this case do not improve the technology the way
the claims in BASCOM did. There, the patent improved
prior art content filtering solutions by making them more
dynamic, thus using software to improve the performance
of the computer system itself. BASCOM, 827 F.3d at 1351.
Here, the claims do nothing to improve how charging sta-
tions function; instead, the claims merely add generic net-
working capabilities to those charging stations and say
“apply it.” See Alice, 573 U.S. at 223. This is simply an
“abstract-idea-based solution implemented with generic
technical components in a conventional way.” BASCOM,
827 F.3d at 1351.
CHARGEPOINT, INC. v. SEMACONNECT, INC. 25
In short, we agree with SemaConnect that the only pos-
sible inventive concept in the eight asserted claims is the
abstract idea itself. ChargePoint, of course, disagrees with
this characterization, arguing that its patents claim
“charging stations enabled to use networks, not the net-
work connectivity itself.” Reply Br. 29. But the specifica-
tion gives no indication that the patented invention
involved how to add network connectivity to these charging
stations in an unconventional way. From the claims and
the specification, it is clear that network communication is
the only possible inventive concept. Because this is the ab-
stract idea itself, this cannot supply the inventive concept
at step two. The claims are therefore ineligible.
C
ChargePoint briefly contends that the district court
erred by refusing to consider ChargePoint’s submitted dec-
larations, “[d]espite its ability to do so under Rule 12(d).”
Appellant’s Br. 21. In ChargePoint’s view, these declara-
tions would have aided the district court in analyzing step
two. But Appellant makes no argument that the district
court was required to consider such materials under these
circumstances, and we see no error in the court’s decision
to decide the motion in the form it was presented.
D
ChargePoint also contends that the district court erred
by dismissing the complaint with prejudice, thus preclud-
ing ChargePoint from amending its complaint to add addi-
tional factual allegations. Appellant’s Br. 64–65. As part
of its argument, ChargePoint notes that the district court
did not address whether amending the complaint would be
futile.
In response, SemaConnect points out that ChargePoint
never requested that its complaint be dismissed without
prejudice, nor did ChargePoint seek leave from the district
court to amend its complaint. Appellee’s Br. 62–63.
26 CHARGEPOINT, INC. v. SEMACONNECT, INC.
Indeed, ChargePoint did not even suggest the possibility of
amendment below. This appeal is the first time Charge-
Point has raised this issue. See id. ChargePoint does not
dispute this, but merely states that the district court dis-
missed the case with prejudice and entered judgment on
the same day it issued the § 101 decision, leaving Charge-
Point without an opportunity to seek leave to amend. Re-
ply Br. 33.
Under Fourth Circuit law, there is no requirement that
a district court provide a plaintiff with a definitive ruling
on a Rule 12(b)(6) motion before the court dismisses a com-
plaint with prejudice. Adbul-Mumit v. Alexandria Hyun-
dai, LLC, 896 F.3d 278, 291–92 (4th Cir.) (rejecting the
plaintiffs’ argument that plaintiffs had no reason to amend
their complaint until the court provided a “definitive rul-
ing” that would notify plaintiffs of deficiencies in their com-
plaints), cert. denied, 138 S. Ct. 607 (2018); id. (explaining
that “[c]ategorically requiring a district court to first pro-
vide a ‘definitive ruling’ before dismissal with prejudice im-
pedes a district court’s inherent power to manage its
docket” and “would be at odds with our general rule that
the nature of dismissal is a matter for the discretion of the
district court”). We see no error in the district court’s deci-
sion to dismiss the complaint with prejudice and enter
judgment on the same day.
ChargePoint’s concern that the district court made no
finding that amendment would be futile is also unavailing
in these circumstances. See United States ex rel. Carson v.
Manor Care, Inc., 851 F.3d 293, 305 n.6 (4th Cir. 2017). In
Carson, the plaintiff included a cursory request for amend-
ment in its response to a motion to dismiss, and the district
court did not explicitly address that request when it
granted the motion to dismiss with prejudice. Id. The
Fourth Circuit first explained that the district court did not
abuse its discretion in denying the request because the
plaintiff “did not properly file a motion to amend under
Federal Rule of Civil Procedure 15 or submit a proposed
CHARGEPOINT, INC. v. SEMACONNECT, INC. 27
amended complaint.” Id. (citing Drager v. PLIVA USA,
Inc., 741 F.3d 470, 474 (4th Cir. 2014), for the proposition
that “[r]egardless of the merits of the desired amendment,
a district court does not abuse its discretion by declining to
grant a motion that was never properly made”). The court
further explained that while, ordinarily, a denial of leave
to amend without any accompanying rationale is an abuse
of discretion (because it is a failure to exercise discretion at
all), where the plaintiff “made no proffer to the district
court, nor to this Court, of how [its] complaint could be
amended” to survive dismissal, “any amendment would be
futile.” Id. Even more clearly than in Carson, ChargePoint
did not file a motion to amend before the district court. Cf.
Domino Sugar Corp. v. Sugar Workers Local Union 392 of
United Food & Commercial Workers Int’l Union, 10 F.3d
1064, 1068 n.1 (4th Cir. 1993) (“[T]he [plaintiff] contends
that the district court erred by not providing the [plaintiff]
leave to amend its complaint in response to the [defend-
ant’s] motion to dismiss. This argument fails, however, be-
cause the [plaintiff] never requested leave to amend.”).
Moreover, in our view, ChargePoint has not identified any
alleged facts that could be pleaded that would cure the de-
ficiencies in its complaint. Therefore, ChargePoint has
failed to provide any assurance that amendment would be
anything other than futile.
In its Reply, ChargePoint clarifies that it is not asking
this court to grant leave to amend or to require the district
court to do so; instead, ChargePoint states that it seeks
only an order vacating the dismissal with prejudice so that
it can file a motion to amend. Reply Br. 32. But, at least
under Fourth Circuit law, a plaintiff should first seek this
relief in the district court. Under Fourth Circuit precedent,
“[p]laintiffs whose actions are dismissed are free to subse-
quently move for leave to amend pursuant to Federal Rule
of Civil Procedure 15(b) even if the dismissal is with preju-
dice.” Adbul-Mumit, 896 F.3d at 293. And while “a motion
to amend filed after a judgment of dismissal has been
28 CHARGEPOINT, INC. v. SEMACONNECT, INC.
entered cannot be considered until the judgment is va-
cated,” Calvary Christian Ctr. v. City of Fredericksburg,
710 F.3d 536, 539 (4th Cir. 2013), a post-judgment motion
for leave to amend may be accompanied by a motion under
Rule 59(e) or Rule 60(b), see Laber v. Harvey, 438 F.3d 404,
427 (4th Cir. 2006) (en banc) (“[T]he district court may not
grant the post-judgment motion [to amend] unless the
judgment is vacated pursuant to Rule 59(e) or Fed. R. Civ.
P. 60(b).”). 6
In sum, applying Fourth Circuit law, we see no basis to
vacate the district court’s dismissal with prejudice where
ChargePoint never sought leave to amend pre-judgment,
where ChargePoint never filed a proposed amended com-
plaint pre-judgment, where ChargePoint could have sought
leave to amend post-judgment by concurrently filing a mo-
tion under Rule 59(e) or 60(b), and where ChargePoint has
not put forth facts that would be sufficient to withstand a
§ 101 challenge.
III
For the foregoing reasons, we affirm the district court’s
determination that claims 1 and 2 of the ʼ715 patent,
claims 1 and 8 of the ʼ131 patent, claims 31 and 32 of the
ʼ570 patent, and claims 1 and 2 of the ʼ967 patent are inel-
igible under § 101.
AFFIRMED
6 “To determine whether vacatur is warranted, how-
ever, the court need not concern itself with either of those
rules’ legal standards. The court need only ask whether
the amendment should be granted, just as it would on a
prejudgment motion to amend pursuant to [Rule] 15(a).”
Katyle v. Penn Nat’l Gaming, Inc., 637 F.3d 462, 471 (4th
Cir. 2011).