Petition for Writ of Certiorari — ChargePoint, Inc., Petitioner v. SemaConnect, Inc.

Supreme Court briefOct 21, 2019

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No. 19IN THE

Supreme Court of the United States

___________

CHARGEPOINT, INC.,

SEMACONNECT, INC.,

___________

Petitioner,

Respondent.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

___________

PETITION APPENDIX

___________

CARTER G. PHILLIPS*

RYAN C. MORRIS

LUCAS W.E. CROSLOW

SIDLEY AUSTIN LLP

1501 K Street, N.W.

Washington, D.C. 20005

(202) 736-8000

cphillips@sidley.com

Counsel for Petitioner

October 21, 2019

* Counsel of Record

TABLE OF CONTENTS

APPENDIX A: Opinion, ChargePoint, Inc. v.

SemaConnect, Inc., No. 2018-1739 (Fed. Cir.

Mar. 28, 2019) ....................................................

Page

APPENDIX B: Mem. & Order: Mot. to Dismiss,

ChargePoint, Inc. v. SemaConnect, Inc., No.

MJG-17-3717 (D. Md. Mar. 23, 2018) ............... 31a

APPENDIX C: Judgment, ChargePoint, Inc. v.

SemaConnect, Inc., No. 2018-1739 (Fed. Cir.

Mar. 28, 2019) .................................................... 87a

APPENDIX D: Order, ChargePoint, Inc. v.

SemaConnect, Inc., No. 2018-1739 (Fed. Cir.

July 23, 2019) (per curiam) ............................... 88a

APPENDIX A

UNITED STATES COURT OF APPEALS,

FEDERAL CIRCUIT

————

2018-1739

————

CHARGEPOINT, INC.,

Plaintiff-Appellant,

SEMACONNECT, INC.,

Defendant-Appellee.

————

Decided: March 28, 2019

————

OPINION

Prost, Chief Judge.

Appellant ChargePoint, Inc. appeals the decision of

the U.S. District Court for the District of Maryland,

which dismissed 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 ineligible for patenting under 35 U.S.C. § 101.

We affirm.

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. 8,138,715 col. 1 ll. 20–24 (“the ’715 patent”). At the

time the patent application was filed, this process “typi-

cally 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

shopping centers have installed electric vehicle charging stations 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 vehicle 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 sufficient electricity to meet demand. Id. col. 1 ll.

39–41. During such periods when power supply is low

compared to demand, supply to certain customers or

services may be reduced based on a preplanned load

prioritization scheme. Id. col. 1 ll. 44–47. The idea of

reducing electricity consumption 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

improved charging stations that address the various

needs inherent 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 locate 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]

charging infrastructure, in the face of widespread

industry skepticism, 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 innovations.” J.A.

84 ¶ 9.

According to ChargePoint, its inventions enabled

individual 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 to locate available charging stations remotely. See, e.g., ’715 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 during

periods of high demand. Id. col. 4 ll. 54–58. These

capabilities are described in the four patents at issue

in this appeal.

There are four patents at issue in this case: U.S.

Patent Nos. 8,138,715; 8,432,131 (“the ’131 patent”);

8,450,967 (“the ’967 patent”); and 7,956,570 (“the ’570

patent”). The patents share the same specification.

These patents generally describe electric vehicle

charging 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. ’715 patent col. 5 ll. 38–42.

ChargePoint asserted claims 1 and 2 of the ’715

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 ’131 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 demand response communications received

from the server.

With respect to the ’967 patent, ChargePoint asserted

claims 1 and 2. J.A. 104, 107 ¶¶ 71–72 (Compl.). These

claims are method claims related to using the networkcontrolled charging stations. They also incorporate the

idea of demand response.

Finally, regarding the ’570 patent, ChargePoint

asserted claims 31 and 32. J.A. 91, 96 ¶¶ 38–39

(Compl.). These claims describe a network-controlled

charging station system.

ChargePoint sued SemaConnect for patent infringement 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 ineligible for patenting under

§ 101. ChargePoint, Inc. v. SemaConnect, 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

appealed. We have jurisdiction under 28 U.S.C.

§ 1295(a)(1).

We review a district court’s grant of a Rule 12(b)(6)

motion 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

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 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

Subject matter eligibility under § 101 may be determined 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 question 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

process, machine, manufacture, or composition of matter,

or any new and useful improvement thereof, may obtain

a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. This provision,

however, contains 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, 134

S.Ct. 2347, 189 L.Ed.2d 296 (2014).

In analyzing whether the claims are patent eligible,

we employ the two-step analysis articulated in Mayo

Collaborative Services v. Prometheus Laboratories, Inc.,

566 U.S. 66, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012),

and further delineated in Alice. “First, we determine

whether the claims at issue are directed to one of those

patent-ineligible concepts.” Alice, 573 U.S. at 217, 134

S.Ct. 2347. If the claims are directed to a patent ineligible concept, we begin the “search for an ‘inventive

concept’—i.e., an element or combination of elements

that is ‘sufficient to ensure that the patent in practice

amounts to significantly more than a patent upon the

[ineligible concept] itself.’” Id. at 217–18, 134 S.Ct.

this case law, we hold that argument forfeited, as it is not

addressed elsewhere in ChargePoint’s briefing.

2347 (internal quotation marks omitted) (quoting

Mayo, 566 U.S. at 72–73, 132 S.Ct. 1289).

At step one of the Mayo/Alice inquiry, “[w]e must

first determine whether the claims at issue are

directed to a patent-ineligible concept.” Id. at 218, 134

S.Ct. 2347. We recognize that “[a]t some level, ‘all

inventions . . . embody, use, reflect, rest upon, or apply

laws of nature, natural phenomena, or abstract ideas.’”

Id. at 217, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at

71, 132 S.Ct. 1289). Thus, 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 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 Patents

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 illuminating 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, 98

S.Ct. 2522, 57 L.Ed.2d 451 (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, 86 S.Ct. 708, 15 L.Ed.2d 572

(1966) (“[I]t is fundamental that claims are to be

construed in the light of the specifications and both are

to be read 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 specification 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 preemption,” Alice, 573 U.S. at

216, 134 S.Ct. 2347, 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, 69 S.Ct. 535,

93 L.Ed. 672 (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 ineligible

matter), whose use the patent law does not authorize

anyone to preempt. See Mayo, 566 U.S. at 72, 132 S.Ct.

1289; see also Alice, 573 U.S. at 223, 134 S.Ct. 2347

(noting “the preemption concern that undergirds 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

exceptions to patentability.”).

With these tools in mind, we turn to the claims at

issue in this case. We address each claim separately,

as the parties have not designated a representative

claim.

Claims 1 and 2 of the ’715 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 transfer 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 connected to the remote server through

a wide area network; and

a controller, coupled with the control device and

the transceiver, to cause the control device 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.

’715 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 determine

whether the focus of claim 1, as a whole, is the abstract

idea. As explained below, we conclude that it is.

10a

While “[t]he § 101 inquiry must focus on the language of the Asserted Claims themselves,” Synopsys,

Inc. v. Mentor 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

specification, of which they are a part.’” (quoting

Markman v. Westview Instruments, Inc., 52 F.3d 967,

979 (Fed. Cir. 1995))).

The “directed to” inquiry may also involve looking

to the specification to understand “the problem facing

the inventor” 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 supported 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 inventor was not how to

combine a camera with a cellular telephone, 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 recording,

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

11a

“the specification’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 because the specification “fail[ed]

to provide any technical details 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 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 interact 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

efficiently with the charging stations. For example,

the specification 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 consumed.” ’715 patent col. 1 ll. 35–

38. Likewise, it states that “[t]here is a need for an

efficient communication network for managing peak

load leveling using Demand Response and V2G.” Id.

12a

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 stations,

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

’715 patent is the idea of network-controlled charging

stations.2 The 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 described 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 vehicles, and

utility companies can supply information to charging

stations from a demand response system.3 Notably,

At step one, we look to what the specification describes 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

analysis.”).

Although not every type of communication that we have

discussed as being in the specification (such as communications

based on demand response) is mentioned in claim 1, we include

these details because they directly correspond to what is expressly

included in claim 1—communication over a network. These

details further illustrate that the invention is the addition of

networking capability and the various communication possibilities it brings.

13a

however, the specification never suggests that the

charging station itself is improved from a technical

perspective, or that it would operate differently than

it otherwise could. Nor does the specification suggest

that the invention involved overcoming some sort of

technical difficulty in adding networking capability to

the charging stations.

In short, looking at the problem identified in the

patent, 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, 134 S.Ct. 2347

(“[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, 130 S.Ct. 3218, 177 L.Ed.2d 792

(2010))). Although this is not necessarily 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 science 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 determine whether

the claims extend to cover a ‘fundamental . . . practice

long prevalent in our system. . . .’” (quoting Alice,

14a

573 U.S. at 219, 134 S.Ct. 2347)).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 particular 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 communication

over a network for device interaction. See Ariosa

Diagnostics, 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 themselves,” Synopsys,

839 F.3d at 1149, and the specification 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 nonetheless

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, 14

L.Ed. 601 (1853).5 In Morse, the Court upheld claims

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, 134 S.Ct. 2347 (mentioning the underlying concern of

preemption in the step two portion of the analysis).

Although we have referenced Morse in other contexts, 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

15a

related to the details of Samuel Morse’s invention of

the electromagnetic telegraph, but invalidated a claim

for the use of “electromagnetism, however 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 electromagnetism 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). There, the patent described

the inventor’s machine for cutting ice in great detail.

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 unmaintainable” because “[i]t is a claim for

an art or principle in the abstract, and not for any

particular method or machinery, by which ice is to be

cut.” Id.

As we explained in Interval Licensing LLC v. AOL,

Inc., in Morse and Wyeth, each inventor “lost a claim

that encompassed all solutions for achieving a desired

result” because 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 explanation of

Morse in many of its § 101 opinions. Alice, 573 U.S. at 216, 134

S.Ct. 2347; Mayo, 566 U.S. at 72, 85, 132 S.Ct. 1289; Flook, 437

U.S. at 592, 98 S.Ct. 2522; Gottschalk v. Benson, 409 U.S. 63, 68,

93 S.Ct. 253, 34 L.Ed.2d 273 (1972).

16a

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 mechanism for implementing network communication on a charging 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 communication 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

patent eligible because the claimed invention “build[s]

a better machine.” Appellant’s Br. 24, 29. We are not

persuaded. Claim 1 indicates that the abstract idea is

associated 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 apparatus 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, 134 S.Ct. 2347; In re

TLI Commc’ns, 823 F.3d at 611 (“[N]ot every claim

that recites concrete, tangible components escapes 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, 134

S.Ct. 2347 (quoting Flook, 437 U.S. at 593, 98 S.Ct.

2522). As discussed above, the claim language 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

17a

to facilitate 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 vehicle” 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.

Claims 1 and 8 of the ’131 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 remote

server via a data control unit that is connected to

the remote server through a wide area network

and receive communications from the remote

server, wherein the received communications

include communications as part of a demand

response system; and

a controller, coupled with the control device and

the transceiver, to cause the control device to

modify the application of charge transfer based on

the communications received as part of the

demand response system.

...

8. The apparatus of claim 1, wherein the

communications received as part of the demand

response system include power grid load data, and

18a

wherein the controller is further to manage

charge transfer based on the received power grid

load data.

’131 patent claims 1 and 8.

Claim 1 of the ’131 patent is almost identical to

claim 1 of the ’715 patent. The key differences are

that the apparatus in claim 1 of the ’131 patent does

not make requests for charge transfer (it only receives

them) and that the electricity supply is modified “based

on the communications received as part of the demand

response system.” ’131 patent claim 1. Because of the

similarity to claim 1 of the ’715 patent, we incorporate

our analysis of that claim and add additional comments only as necessary.

ChargePoint contends that claims 1 and 8 of the ’131

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

communications with utilities.” Reply Br. 5. To the

extent ChargePoint is arguing that modification itself

is an improvement, nothing in the specification explains

from a technical perspective 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 ’131 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 production. For example, the cost of electricity may be reduced during periods of low demand.”).

As we have said before, “[a]dding one abstract idea . . .

19a

to another abstract idea . . . does not render the

claim non-abstract.” RecogniCorp, LLC v. Nintendo

Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017), cert. denied,

––– U.S. ––––, 138 S.Ct. 672, 199 L.Ed.2d 535 (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.

Claims 1 and 2 of the ’967 patent are method claims

written from the perspective of the server that communicates 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 networkcontrolled charge transfer device that indicates to

the network-controlled charge transfer device to

enable charge transfer; and

transmitting a communication for the networkcontrolled 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 validating a payment source for the charge transfer.

’967 patent claims 1 and 2.

20a

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 ’131 patent, the

patent never discusses any technical details regarding

how to modify electricity flow, and the fact that any

modifications are made in response to a demand

response policy merely adds one abstract concept to

another.

The additional limitation in claim 2 regarding

validating a payment source merely provides content

for what occurs 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 ’967

patent are directed to the abstract idea of communicating over a network.

Claims 31 and 32 of the ’570 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, comprising;

21a

an electrical receptacle configured to receive an

electrical connector for recharging an electric

vehicle;

an electric power line connecting said receptacle

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 control

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 being 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.

’570 patent claims 31 and 32.

Although these claims are in a different form than

claim 1 of the ’715 patent, we again find our analysis

of that claim applicable. ChargePoint contends that

the various 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

22a

arrangement of components that enables users and

site hosts to access and control electric-vehicle charging stations.” Reply Br. 7. But the specification does

not suggest that the inventors’ discovery was the

particular arrangement of components 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

’570 patent was intended to improve those particular

components or that the inventors viewed the combination of those components 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.

In short, while the eight claims on appeal vary in

some respects, they are all directed to the abstract idea

of communicating over a network for device interaction. Communication 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, 134 S.Ct.

2347 (characterizing the use of a clearing house in

Bilski as “a building block of the modern economy”).

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.

At step two of the Alice inquiry—the search for an

inventive concept—we “consider the elements of

each claim both individually and ‘as an ordered

combination’ to determine whether the additional

23a

elements ‘transform the nature of the claim’ into a

patent-eligible application.” Id. at 217, 134 S.Ct. 2347

(quoting Mayo, 566 U.S. at 78–79, 132 S.Ct. 1289).

“[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 [claim] is more than a drafting effort designed

to monopolize the [abstract idea].’” Alice, 573 U.S. at

221, 134 S.Ct. 2347 (alteration in original) (quoting

Mayo, 566 U.S. at 77, 132 S.Ct. 1289). These additional features cannot simply be “‘well-understood,

routine, conventional activit[ies]’ previously known to

the industry.” Id. (alteration in original) (quoting

Mayo, 566 U.S. at 79, 132 S.Ct. 1289). Indeed, adding

novel or non-routine components is not necessarily

enough to survive a § 101 challenge. See Ultramercial,

772 F.3d at 715 (disagreeing with the patent owner’s

argument that “the addition of merely novel or nonroutine 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, 132 S.Ct. 1289. In other words,

“transformation into a patent-eligible application requires

‘more than simply stat[ing] the [abstract idea] while

adding the words “apply it.”’” Alice, 573 U.S. at 221,

134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 72, 132 S.Ct.

1289); see Mayo, 566 U.S. at 77, 132 S.Ct. 1289 (asking

whether the claims “add enough”).

Whether a claim “supplies an inventive concept that

renders a claim ‘significantly more’ than an abstract

24a

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-understood, 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 unconventional solution to technological problems

in the field, and thus contain an inventive concept.

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 communication network that facilitates

finding an available charging station, controlling the

station, and paying for electricity; and the need for real

time communication to effectively 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 electric 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 implement a demand response policy. Appellant’s Br. 59. To support the unconventional nature

of these alleged improvements, ChargePoint relies

25a

on allegations in its complaint, which state that

ChargePoint’s patents “describe a paradigm-shifting

concept of how to charge electric vehicles 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,

ChargePoint highlights certain aspects of each asserted

claim. We address each argument in turn. First, with

respect to claims 1 and 2 of the ’715 patent, as well

as claims 31 and 32 of the ’570 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 ’131 patent, as well

as claims 1 and 2 of the ’967 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 connecting generic networking

equipment to a charging device to carry out a demand

response plan already existed and was well-under-

26a

stood, 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 ’131 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 concept 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 stations function; instead, the

claims merely add generic networking capabilities to

those charging stations and say “apply it.” See Alice,

573 U.S. at 223, 134 S.Ct. 2347. This is simply an

“abstract-idea-based solution implemented with generic

technical components in a conventional way.” BASCOM,

827 F.3d at 1351.

In short, we agree with SemaConnect that the only

possible 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 network connectivity itself.” Reply Br.

29. But the specification 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

27a

inventive concept. Because this is the abstract idea

itself, this cannot supply the inventive concept at step

two. The claims are therefore ineligible.

ChargePoint briefly contends that the district court

erred by refusing to consider ChargePoint’s submitted

declarations, “[d]espite its ability to do so under Rule

12(d).” Appellant’s Br. 21. In ChargePoint’s view,

these declarations 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.

ChargePoint also contends that the district court

erred by dismissing the complaint with prejudice, thus

precluding ChargePoint from amending its complaint

to add additional 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. Indeed, ChargePoint did not

even suggest the possibility of amendment below. This

appeal is the first time ChargePoint has raised this

issue. See id. ChargePoint does not dispute this, but

merely states that the district court dismissed the case

with prejudice and entered judgment on the same day

it issued the § 101 decision, leaving ChargePoint

28a

without an opportunity to seek leave to amend. Reply

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 complaint with prejudice. Adbul-Mumit v.

Alexandria Hyundai, 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 ruling” that would notify plaintiffs of deficiencies in their complaints), cert. denied,

––– U.S. –––, 139 S. Ct. 607, 202 L.Ed.2d 431 (2018);

id. (explaining that “[c]ategorically requiring a district

court to first provide a ‘definitive ruling’ before dismissal with prejudice impedes a district court’s inherent

power to manage its docket” and “wocourtuld 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 decision 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 amendment 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

amended complaint.” Id. (citing Drager v. PLIVA USA,

29a

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 [defendant’s]

motion to dismiss. This argument fails, however, because

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 deficiencies 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 subsequently

move for leave to amend pursuant to Federal Rule of

30a

Civil Procedure 15(b) even if the dismissal is with

prejudice.” Adbul-Mumit, 896 F.3d at 293. And while

“a motion to amend filed after a judgment of dismissal

has been entered cannot be considered until the

judgment is vacated,” 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 prejudgment, where ChargePoint never filed a proposed

amended complaint pre-judgment, where ChargePoint

could have sought leave to amend post-judgment by

concurrently filing a motion 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 ’715

patent, claims 1 and 8 of the ’131 patent, claims 31 and

32 of the ’570 patent, and claims 1 and 2 of the ’967

patent are ineligible under § 101.

AFFIRMED

“To determine whether vacatur is warranted, however, 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).

31a

APPENDIX B

UNITED STATES DISTRICT COURT,

D. MARYLAND

————

Civil Action No. MJG-17-3717

————

CHARGEPOINT, INC.,

Plaintiff,

SEMACONNECT, INC.,

Defendant.

————

Signed 03/23/2018

————

MEMORANDUM AND ORDER:

MOTION TO DISMISS

Marvin J. Garbis, United States District Judge

The Court has before it Defendant’s Motion to

Dismiss for Failure to State a Claim [ECF No. 41] and

the materials submitted related thereto. The Court

has held a hearing and has had the benefit of the

arguments of counsel.

I. INTRODUCTION

Plaintiff ChargePoint, Inc. (“ChargePoint”), founded

in 2007, is a Delaware corporation with its principal

place of business in Campbell, California. Compl. ¶ 21,

ECF No. 1. ChargePoint claims itself to be the “pioneer

in the electric vehicle charging infrastructure industry,”

boasting “tens of thousands of stations that have been

used more than 16 million times” worldwide. Id. ¶ 5.

32a

ChargePoint owns United States Patent Nos. 7,956,570

(the “’570 Patent”); 8,138,715 (the “’715 Patent”);

8,432,131 (the “’131 Patent”); and 8,450,967 (the “’967

Patent”) (collectively, the “Asserted Patents”). Id. ¶ 8.

The Asserted Patents generally relate to various

methods, systems, and apparatuses for networked

electric vehicle (“EV”) charging stations.

Defendant SemaConnect, Inc. (“SemaConnect”), a

Maryland corporation based in Bowie, Maryland,

manufactures EV charging equipment. Id. ¶ 22.

ChargePoint’s Complaint [ECF No. 1] accuses

SemaConnect of offering to sell, selling, and using EV

charging devices that infringe on the Asserted

Patents. Id. ¶ 30-33.

On December 28, 2017, by the Memorandum &

Order Re: Temporary Injunction [ECF No. 39], the

Court denied ChargePoint’s attempt to obtain a

Temporary Injunction. SemaConnect subsequently filed

the present motion and has submitted its Identification

of Non-infringement Defenses [ECF No. 42], which

includes the defense that the Asserted Patents are

invalid under 35 U.S.C. § 101.

By the instant motion, Defendant SemaConnect

contends that United States Patent Nos. 7,956,570;

8,138,715; 8,432,131; and 8,450,967 are invalid

because they are not directed to patent-eligible subject

matter pursuant to 35 U.S.C. § 101. The Asserted

patents were all issued prior to the Supreme Court’s

decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct.

2347 (2014).

33a

II. BACKGROUND

A. The Alleged Invention

The four Asserted Patents share a specification and

claim priority to United States Provisional Application

No. 61/019,474 filed on January 7, 2008.

The specification describes a system of EV charging

stations that are connected to a remote server via a

network (i.e., the Internet). ’570 Patent 3:35-45. The

remote server stores a variety of information including

customer profiles, load data from the electric grid

(updated in real time), and electricity consumption

data. Id. The EV charging station and server can be

remotely accessed and controlled by a user via a cell

phone or other electronic device. Id. at 3:48-53.

The system may also contain features such as an

electric meter to measure consumption of electricity

through each charging station, a payment station

(separate from the individual charging station), or a

device to detect whether a parking spot is occupied. Id.

at 3:54-65.

The specification essentially states that the system

provides two main improvements over previouslyavailable technology: (1) a customized and convenient

user experience and (2) management of electric

flow based on electric grid load data. Id. at 3:64-5:3.

The specification purports to achieve these alleged

improvements by filling the need for an “efficient

communication network” between charging stations,

customers, and electric utility companies. Id. at 1:3035, 2:19-23.

The customized user experience allows the user to

monitor, control, and pay for charging a vehicle from a

remote device such as a cell phone. Id. at 4:16. It

34a

allows a user to “enabl[e] charge transfer” and monitor

electric consumption by communicating a request to

the server. Id. at 4:16-43. The server then sends a

command to enable (or disable) electric flow between

the vehicle and charging station, and the charging

station reports consumption data back to the server

which is relayed to the customer’s cell phone. Id.

A customer may pay for a charging session by using

payment information stored in a user profile on the

server. Id. The user profile may also include custom

payment rates for each user based on a user’s subscription status and the location of the charging station

(e.g., a resident of a community may be charged a

lower rate when using a charging station in that

community). Id. at 3:64-5:3. A user profile may also

contain charging preferences such as only charging

during periods of lower power rates, not charging

during periods of peak power grid load, or selling

power from the vehicle back to the power grid. Id. at

4:56-60. These features provide greater control and

convenience for a customer over existing technology

because a customer may remotely manage the vehicle

charging process (which takes several hours to

complete) rather than having to be present physically

at the site of the vehicle and charging station. Id.

Furthermore, management of electric grid load data

through a communication network may include the

ability to “manage peak load leveling” using “Demand

Response” and “vehicle-to-grid (V2G).” Id. at 2:1-8,

4:44-57. Demand Response is a “preplanned load prioritization scheme” provided by the utility company that

is used to “reduc[e] consumption of electricity during

periods of high demand.” Id. at 1:37-54. When the

electric grid is strained due to increased demand, the

utility company may transmit a command (over a

35a

network) to the server, “requiring a reduction in load.”

Id. at 10:50-60. The server then sends a signal (over a

network) to individual charging stations, commanding

certain charging stations to turn off. Id. at 4:44-57,

10:50-60. The server may rely on a customer’s user

profile (e.g., a customer may only want their vehicle

to be charged during periods of low power rates) or

“the requirements of the [utility company’s] Demand

Response system” when deciding which charging stations

to turn off. Id. The specification also states that the

Demand Response system and customer profile information may allow for vehicle-to-grid (“V2G”) in which

electricity stored in the vehicle is transferred back to

the electric grid during times of peak demand. Id. at

1:55-67, 9:58-60.

The specification states that the need for electric

grid load management of EV charging stations is

made possible through the communication network as

claimed in the Asserted Patents. Id. at 2:1-8.

B. Factual Background

In August 2016, Volkswagen settled the lawsuit

brought by the United States government for its wellknown vehicle emissions scandal (commonly known

as “Dieselgate”). The settlement totaled $15 billion,

of which $2 billion was appropriated to fund an EV

infrastructure in the United States. ChargePoint

formally objected to that settlement during the preliminary court-approval process stating that the $2 billion

investment would “flood a competitive market” and

“threaten[ ] the survival of the current participants in

the market, and thus the market itself.”1 Nonetheless,

See In re VOLKSWAGON “CLEAN DIESEL” MARKETING

SALES PRACTICES, AND PRODUCTS LIABILITY LITIGATION,

36a

the settlement was approved, and a company called

Electrify America, LLC (“Electrify America”) was formed

to manage the implementation of the plan.

A major part of Electrify America’s plan includes

funding the cost of equipment and installation for electric vehicle charging stations, which will be installed

at workplaces, garages, retail centers, and residential

locations in chosen major metropolitan areas.

Electrify America considered bids for contracts to

manufacture and install EV charging stations during

Phase I of Electrify America’s infrastructure plan.

Electrify America narrowed the list of bidders to four

companies, including SemaConnect, ChargePoint, and

two others. Ultimately, Electrify America awarded

contracts to SemaConnect and two other companies

but not ChargePoint.

ChargePoint has since filed the Complaint [ECF

No. 1], asserting that SemaConnect’s EV charging

station model infringes claims in the Asserted Patents.

ChargePoint specifically points to network control

features in SemaConnect’s advertised models that

allegedly infringe on the claims. Compl. ¶¶ 34-77. By

the instant motion, Defendant SemaConnect contends

that United States Patent Nos. 7,956,570; 8,138,715;

8,432,131; and 8,450,967 are invalid because they are

not directed to patent-eligible subject matter pursuant

to 35 U.S.C. § 101.

C. Claims at Issue

The Asserted Patents present apparatus claims

(involving charging station hardware), system claims

(involving a server, charging station, and other

3:15-md-02672––, Dkt. No. 1784 at 9-10 (Amicus Curiae Brief of

ChargePoint).

37a

components which interact with one another), and

method claims (involving a process in a server for

deciding to enable charge through a network).

In this case, ChargePoint asserts eight claims (“the

Asserted Claims”) that are addressed in regard to the

instant motion:

’570 Patent: Claims 31 and 32 (system claims);

’715 Patent: Claims 1 and 2 (apparatus claims);

’131 Patent: Claims 1 and 8 (apparatus claims); and

’967 Patent: Claims 1 and 2 (method claims).

The Court would not be required to evaluate each

claim separately if it were clear that they do not “differ

in any manner that is material to the patent-eligibility

inquiry.” Mortg. Grader, Inc. v. First Choice Loan

Servs., Inc., 811 F.3d 1314, 1324 n.6 (Fed. Cir. 2016).

However, considering that ChargePoint is the nonmoving party and has demonstrated to some degree

that the claims are different, the Court will analyze

each claim separately for patent eligibility.

III. LEGAL STANDARD

A. In General

Federal courts must dismiss a complaint that fails

to state a claim upon which relief can be granted. Fed.

R. Civ. P. 12(b)(6).

Patent eligibility under 35 U.S.C. § 101 is a question

of law and a threshold issue that can be suitable

for resolution on a motion to dismiss. Intellectual

Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315,

1319 (Fed. Cir. 2017)(citing OIP Techs., Inc. v.

Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.

2015)).

38a

When reviewing a motion to dismiss pursuant to

Fed. R. Civ. P. 12(b)(6), a plaintiff’s well-pleaded

allegations are accepted as true, and the complaint is

viewed in the light most favorable to the plaintiff. Bell

Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)

(citations omitted). To survive a motion to dismiss, a

plaintiff’s complaint must contain sufficient facts that,

if assumed to be true, state a claim to relief that is

plausible on its face. Id. at 570.

B. Clear and Convincing Standard

While patent eligibility under § 101 is a question of

law, the issues may include underlying questions of

fact. Mortg. Grader, 811 F.3d at 1325. In regard to a

patent that has been issued, “any fact . . . that is

pertinent to the invalidity conclusion must be proven

by clear and convincing evidence.” Berkheimer v. HP

Inc., ––– F.3d ––––, No. 2017-1437, 2018 WL 774096,

at *5 (Fed. Cir. Feb. 8, 2018)(citing Microsoft Corp. v.

i4i Ltd. P’ship, 564 U.S. 91, 95 (2011)). “Whether a

claim element or combination of elements is well-understood, routine, and conventional to a skilled artisan at

the time of the patent is a factual determination.” Id.

When the invention’s improvements, as alleged in the

specification, create a factual dispute regarding whether

they describe well-understood, routine, and conventional activities, a court “must analyze the asserted

claims and determine whether they actually capture

these improvements.” Id. at *6.

C. Available Evidence

The Court’s review of a Rule 12(b)(6) motion is

generally limited to the contents of the complaint. Zak

v. Chelsea Therapeutics Int’l, Ltd., 780 F.3d 597, 606

(4th Cir. 2015)(motion to dismiss considers the sufficiency of allegations set forth in the complaint and

39a

“documents attached or incorporated into the complaint”)

(citations omitted). Consideration of other documents

at this stage could convert the motion into one for

summary judgment, which would be premature because

the parties have not yet conducted any discovery. Id.

at 606; see also Theune v. U.S. Bank, N.A., No. MJG13-1015, 2013 WL 5934114, at *4, n.12 (D. Md. 2013).

An exception to this rule is that courts may consider

documents that are “integral to and [are] explicitly

relied on in the judgment complaint,” without converting the motion to one for summary judgment. Zak, 780

F.3d at 606-7 (quoting Phillips v. LCI Int’l Inc., 190

F.3d 609, 618 (4th Cir. 1999)).

ChargePoint has incorporated several expert

declarations into its Memorandum in Opposition to

Defendant’s Motion to Dismiss [ECF No. 43] in order

to establish the convention of the field and the

subsequent inventiveness of the claims at the time of

the filing date of the Asserted Patents. See ECF No.

43-1; 43-2; 43-3. The declarations were not relied on in

the Complaint; thus, the exception does not apply. The

Court notes the existence of the declarations but will

not herein consider the contents (or the incorporated

arguments as they apply to the eligibility analysis) as

they are not appropriate at the Rule 12(b)(6) stage.

D. Claim Construction

There is no hard-and-fast rule that claim construction is required before a court performs a § 101

analysis. Bancorp Servs., L.L.C. v. Sun Life Assur. Co.

of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir.

2012). In some cases, claim construction may be unnecessary. Content Extraction & Transmission LLC v.

Wells Fargo Bank, Ass’n, 776 F.3d 1343, 1349 (Fed.

Cir. 2014)(concluding that even adopting the plain-

40a

tiff’s proposed construction at the Rule 12(b)(6) stage

may not alter the abstract nature of the claims).

In this case, SemaConnect alleges that the claims

are directed to ineligible subject matter even when

accepting ChargePoint’s asserted plain and ordinary

meaning of all claim terms. Def.’s Mem. 17-18, ECF

No. 41-1. Thus, no terms require judicial construction

in order for the Court to resolve the instant motion.

IV. DISCUSSION

SemaConnect contends that the Complaint fails to

state a claim upon which relief can be granted because

the Asserted Claims are directed to patent-ineligible

subject matter pursuant to 35 U.S.C. § 101. SemaConnect

contends that each claim is directed to the abstract

idea of “turning a switch on and off” and that the

abstract idea does not amount to an inventive concept

because the claims recite generic processes and equipment. Def.’s Mem. 20, ECF No. 41-1.

ChargePoint contends that the claims are not

directed to an abstract idea but are, instead, directed

to a technological improvement in EV charging station

systems. Pl.’s Resp. 9-13, ECF No. 43. ChargePoint

also contends that even if the claims are directed to an

abstract idea, the abstract idea amounts to an

inventive concept because the claims recite nonconventional and non-generic arrangements of EV

charging stations. Id. at 25.

The Court shall examine herein each Asserted Claim

to determine if they are eligible for patent protection

by virtue of 35 U.S.C. § 101.

A. § 101 Subject Matter Eligibility

Section 101 of the Patent Act defines subject matter

that is eligible for patent protection. It provides:

41a

Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of

matter, or any new and useful improvement

thereof, may obtain a patent therefor, subject to

the conditions and requirements of this title.

35 U.S.C. § 101. In interpreting the meaning of Section

101, the Supreme Court has held that “[l]aws of nature,

natural phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2355 (citations omitted). The

Supreme Court reasoned that these exceptions are

“the basic tools of scientific and technological work”

and that monopolization of those tools would “preempt use of this approach in all fields” and “impede

innovation more than it would tend to promote it,

thereby thwarting the primary object of the patent

laws.” Id. (citing Ass’n for Molecular Pathology v.

Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013);

Mayo Collaborative Servs. v. Prometheus Lab., Inc.,

566 U.S. 66, 70-84 (2012)).

However, the Supreme Court warned that courts

must “tread carefully in construing this exclusionary

principle” because “[a]t some level, all inventions . . .

embody, use, reflect, rest upon, or apply laws of nature,

natural phenomena, or abstract ideas.” Id. (citing

Mayo, 566 U.S. at 71).

The Supreme Court set forth a two-step test to

determine whether an invention is patent-eligible

subject matter. A court must determine:

(1) whether the claim is directed to a patent

ineligible concept, i.e., a law of nature, a natural

phenomenon, or an abstract idea; and if so

(2) whether the elements of the claim, considered

both individually and as an ordered combination,

42a

add enough to transform the nature of the claim

into a patent-eligible application.

Intellectual Ventures I LLC v. Erie Indem. Co., 850

F.3d 1315, 1325 (Fed. Cir. 2017)(citing Alice, 132 S. Ct.

at 2355). The Federal Circuit typically refers to step

one as the “abstract idea step” and step two as the

“inventive idea step” when applying the test to claims

challenging an abstract idea exception. Id. If the

claims are found to be directed to a patent-eligible

concept (not abstract) during step one, the claims will

satisfy § 101, and the inquiry ends. Visual Memory

LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir.

2017).

B. Step One: Abstract Idea Test

1. Legal Standard

Under step one of the Alice test, the court must

determine whether the claims are directed to a patentineligible concept such as an abstract idea. Alice, 134

S. Ct. at 2355. In determining whether a claim is

abstract, “claims are considered in their entirety to

ascertain whether their character as a whole is

directed to excluded subject matter.” Internet Patents

Corp. v. Active Network, Inc., 790 F.3d 1343, 1346

(Fed. Cir. 2015); see also Finjan, Inc. v. Blue Coat Sys.,

Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)(quoting

Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d

1253, 1257 (Fed. Cir. 2016)(finding that a court must

examine the “patent’s ‘claimed advance’ to determine

whether the claims are directed to an abstract idea”)).

The Federal Circuit has cautioned against assessing

a claim’s “character as a whole” and “describing the

claims at such a high level of abstraction and untethered from the language of the claims [such that it] all

but ensures that the exceptions to § 101 swallow the

43a

rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,

1335-37 (Fed. Cir. 2016). Nonetheless, first, a court

must identify the claimed concept’s character as a

whole. Id.

Next, a court must compare the claimed concept’s

character as a whole to claims that have been held to

be abstract. Enfish, 822 F.3d at 1334 (finding that

although the Supreme Court “has not established a

definitive rule to determine what constitutes an abstract

idea,” the Federal Circuit and Supreme Court have

outlined factors to consider and have “found it sufficient to compare claims at issue to those claims already

found to be directed to an abstract idea in previous

cases.”).

The Federal Circuit has held that in determining

whether a claim encompasses an abstract idea, “it is

often useful to determine the breadth of the claims in

order to determine whether the claims extend to cover

a fundamental . . . practice long prevalent in our

system. . . .” In re TLI Commc’ns LLC Patent

Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016)(citing

Intellectual Ventures I LLC v. Capital One Bank

(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)). The

Federal Circuit has also stated that in order to prevent

the risk of preemption of an approach to an entire

field, courts must:

look to whether the claims in the patent focus

on a specific means or method, or are instead

directed to a result or effect that itself is the

abstract idea and merely invokes generic processes

and machinery. Claims directed to generalized

steps to be performed on a computer using conventional computer activity are not patent eligible.

44a

Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1337 (2017)(citing McRO,

Inc. v Bandai Namco Games America Inc., 837 F.3d

1299, 1314 (2016)); (Internet Patents, 790 F.3d at 134849). Even if the claims recite tangible components, the

physical components of the claims cannot “merely be

conduits” for the abstract idea. In re TLI, 823 F.3d at

612; see also Alice, 134 S. Ct. at 2360 (noting that not

every claim that recites concrete tangible components

escapes the reach of the abstract-idea inquiry). The

claims must focus on how a result is achieved instead

of reciting “result-based functional language.” TwoWay Media, 874 F.3d at 1337-8; see also Electric Power

Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.

Cir. 2016)(finding that “there is a critical difference

between patenting a particular concrete solution to a

problem and attempting to patent the abstract idea of

a solution to the problem in general”).

Furthermore, the Federal Circuit has consistently

held that gathering, analyzing, transmitting, receiving,

filtering, organizing, or displaying data, and combinations thereof, is an abstract idea without something

more. Electric Power, 830 F.3d at 1353-54 (the collection, manipulation, and display of electric power grid

data, without changing the character of the information, is abstract); Open Parking, LLC v. ParkMe,

Inc., No. 2:15-CV-976, 2016 WL 3547957, at *8 (W.D.

Pa. June 30, 2016), aff’d, 683 Fed.Appx. 932 (Mem)

(Fed. Cir. 2017)(moving data from one place to another,

such as transmitting the availability of a parking

space to a driver’s cell phone, is abstract); Content

Extraction and Transmission LLC v. Wells Fargo

Bank Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)

(collecting data, recognizing certain data, and storing

that data is abstract); Intellectual Ventures I LLC v.

Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.

45a

2017)(collecting, displaying, and manipulating data is

abstract).

Claims directed to fundamental financial practices,

particularly validating a payment source over a network and determining a custom price for a customer

based on predetermined rules, have also been construed to be abstract. Smart Sys. Innovations, LLC v.

Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir.

2017)(validating a payment source with stored account

information on a server in order to open a turnstile in

a mass transit system is abstract and non-inventive);

Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306,

1312-13 (Fed. Cir. 2015)(determining the customized

price of a product for a customer using organizational

and product group hierarchies is abstract); buySAFE,

Inc. v. Google, Inc., 765 F.3d 1354-5 (Fed. Cir. 2014)

(computer applications for guaranteeing a party’s

performance of its online transaction are abstract and

ineligible subject matter).

On the other hand, claims that are directed to a

specific improvement to the functioning of computers

or any other technology or technical field may not be

abstract. Enfish, 822 F.3d at 1335-6 (claims for a

specific database structure involved, but were not

directed to, the abstract idea of organizing information

using tabular formats and instead were directed to

improving the way a computer stores and retrieves

data); McRO, 837 F.3d at 1315 (the incorporation of

specific rules for producing accurate and realistic lip

synchronization and facial expressions in animated

characters was not abstract because it improved on the

pre-existing process and because the patent claimed

specific rules for achieving the improvement); Amdocs

(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,

1300 (Fed. Cir. 2016)(a distributed network architec-

46a

ture wherein data is collected and combined from several

sources improved upon the technical field because it

reduced network congestion while generating massive

amounts of accounting data); Thales Visionix Inc. v.

United States, 850 F.3d 1343, 1345 (Fed. Cir. 2017)

(claims reciting a unique configuration of inertial

sensors and the use of a mathematical equation for

calculating the location and orientation of an object

relative to a moving platform were directed to a

technological improvement, not an abstract idea);

Visual Memory, 867 F.3d at 1262 (a computer memory

system connectable to a processor and having programmable operational characteristics allowed interoperability

with different processors and was not directed to the

abstract idea of categorical data storage).

While the search for an improvement to technology

does overlap with the Alice step two analysis, courts

have found it sufficient to conclude that claims are

directed to an improvement in technology functioning,

as opposed to an abstract idea, in step one. Enfish, 822

F.3d at 1335-36.

In contrast, the Federal Circuit has provided

examples of claims that are not, in fact, directed to an

improvement in the functioning of technology. For

example, a court must look to the specification to

determine whether it discloses the manner in which

the alleged improvement is achieved. Affinity Labs of

Tex. v. DirecTV, LLC, 838 F.3d 1253, 1263-64 (Fed.

Cir. 2016)(finding that the claimed methods of delivering broadcast content to cellphones ineligible because

the specific process by which the improvement is

achieved was not disclosed, and claims were written

with high generality). Mere automation of a manual

process is also an abstract idea and not directed to an

improvement in technology. Credit Acceptance Corp. v.

47a

Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.

2017)(using generic technology to process a car loan

that could otherwise be done manually is abstract).

Analyzing information in a way that can be performed

mentally is also abstract. Digitech Image Techs., LLC

v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.

Cir. 2014). Moreover, claims are not directed to an

improvement in technology if the purported improvements arise solely from the capabilities of generic

technology and computer parts. FairWarning IP, LLC

v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir.

2016)(“While the claimed system and method certainly purport to accelerate the process of analyzing

audit log data, the speed increase comes from the

capabilities of a general-purpose computer, rather

than the patented method itself.”). As previously

discussed, a claim must include more than conventional implementation of generic components to qualify

as an improvement to technology. Affinity Labs, 838

F.3d at 1264-65, (Fed. Cir. 2016); In re TLI, 823 F.3d

at 612-13.

Lastly, “limiting the invention to a technological

environment does ‘not make an abstract concept any

less abstract under step one.’” Berkheimer, 2018 WL

774096, at *6 (citing Intellectual Ventures I LLC v.

Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.

2017)).

If, after completing the Alice step one inquiry, the

claims are found to be directed to an abstract idea, the

Court must proceed to step two.

48a

2. The Asserted Claims Are Directed to

Abstract Ideas

a. The ’715 Patent (Claims 1 and 2)

Claims 1 and 2 of the ’715 Patent are:

1. An apparatus, comprising:

a control device to turn electric supply on and off

to enable and disable charge transfer 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 connected to the remote server

through a wide area network; and

a controller, coupled with the control device and

the transceiver, to cause the control device 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.

’715 Patent 12:7-22.

Claim 1 of the ’715 Patent discloses an apparatus

(charging station) that contains a “control device” (to

switch electric power on and off), a “transceiver”

(which communicates with a “remote server” over a

“wide area network” via a “data control unit”), and a

“controller” (which “causes” the control device to switch

power on or off based on a communication from the

server). Id. Claim 2 adds to the Claim 1 limitations an

49a

“electrical coupler” which connects the charging station

to the electric vehicle to enable charge transfer. Id.

i. Claim 1

Viewing the claim in its entirety to ascertain the

character as a whole, Claim 1 is directed to sending a

request, receiving a command, and executing the

command over a network to operate an EV charging

station in an expected way. This is an abstract idea.

The Court first looks to the specification to

determine what the patent purports to solve. The

specification states that “[t]here is a need for a

communication network which facilitates finding the

recharging facility, controlling the facility, and paying

for electricity consumed.” ’715 Patent 1:35-8. “There is

[also] a need for an efficient communication network

for managing peak load leveling using Demand

Response and V2G.” Id. at 2:8-10. Lastly, “[t]here is

[also] a need to effectively integrate these wide area

networks, local area networks, and short range communication devices into systems used for recharging

electric vehicles.” Id. at 3:30-34. The specification

states that “a system for network-controlled charging

of electric vehicles and the network-controlled electrical outlets used in this system are described herein.”

Id. at 3:47-48. The Complaint further alleges that “the

Asserted Patents describe a paradigm-shifting concept

of how to charge electric vehicles in a dynamic, networked environment.” Compl. ¶ 9, ECF No. 1. Thus,

the invention seeks to create user-related convenience

features and solve the problem of electric grid

stabilization by connecting individual charging stations

to a network so that they can send and receive

communications to achieve these improvements.

50a

The Court next looks to the language of what is

actually claimed. Claim 1 recites a control device, a

transceiver (communicating with a remote server

through a data control unit over a wide area network),

and a controller. ’715 Patent 12:6-18. The control

device “turns[s] electric supply on and off.” Id. at 12:8.

The transceiver “communicate[s] requests for charge

transfer with a remote server and receive[s] communications from the remote server via a data control

unit that is connected to the remote server through a

wide area network.” Id. 12:11-14 (emphasis added).

The controller “causes the control device to turn the

electric supply on based on a communication from

the remote server.” Id. at 12:15-19 (emphasis added).

Thus, the claim is directed to the process of sending a

request to a server (over a network), receiving back a

command from the server, and executing the command

(to turn electric supply on and off). This characterization of the claim is consistent with the specification’s

portrayal of the invention as a communications network.

The Court must now determine whether the character of the claim is directed to an abstract idea. Is

sending a request (over a network), receiving back a

command, and executing the command (to turn electric supply on and off) an abstract idea? The Court

concludes that it is.

Claim 1 amounts to nothing more than the recitation of generic computer and networking equipment to

achieve the result of operating an EV charging station

as it otherwise would be operated without network

connectivity. The claim recites tangible aspects such

as a transceiver, server, data control unit, wide area

network, controller, and control device. However,

these tangible components serve as nothing more than

conduits for the abstract idea of sending requests,

51a

receiving commands, and executing commands on a

device over a network.

The transceiver, data control unit, and wide area

network are nothing more than generic networking

equipment used to connect devices to a server (to

enable sending and receiving communications over a

network). A controller and control device are merely

broad recitations of generic computing components

that can “cause” something to occur. In this particular

field of use, the only thing that can be “caused” is to

turn on/off or modify electric charge.

When attempting to distinguish one of the system

claims with Claim 1 of the ’715 Patent, Counsel for

ChargePoint admitted that:

[t]he ’715 patent simply covers a data controller

connected to an electric vehicle charging station,

connecting to a control device that allows a third

party to remotely and wirelessly control the on/off

functionality of that device. . . .

Hr’g on Motion to Dismiss 41:16-20, ECF No. 48.

Counsel for ChargePoint was pressed by the Court

again in the following exchange:

The Court: So the essence of your invention is a

system where these things can be controlled

remotely and not by somebody just physically at

the charging station?

Mr. Bloch: That is fair, yes. The essence of the

system is charging stations that can be controlled

remotely and can be accessed remotely by all of

the shareholders. . . .

Id. at 43:10-16. In other words, Claim 1 of the ’715

Patent introduces network connectivity to remotely

send and receive commands to perform an existing

52a

device’s normal function, turning on and off. Thus, the

claims, although reciting tangible components, are

directed to the ability to send and receive communications to control an existing device. Reciting tangible

components will not save a claim from being abstract.

Alice, 134 S. Ct. at 2360 (noting that not every claim

that recites concrete tangible components escapes the

reach of the abstract-idea inquiry).

Furthermore, Claim 1 encompasses a “practice long

prevalent in our system.” In re TLI, 823 F.3d at 611.

Sending a request, receiving back a command, and

executing the command in an expected way is a

process that has been performed long before the

arrival of servers and networking equipment. For

example, SemaConnect explains that the exact process

in Claim 1 has been performed in a different field of

use (at a gas station) for many years. Def.’s Mem.,

28-9, ECF No. 41-1. A customer sends a request to a

station attendant to pump gas, the attendant sends

back a command to begin pumping gas (after performing some kind of verification step), and the command

to pump gas is executed (by the customer, attendant,

or computer) by activating the gas pump nozzle in an

expected way. Counsel even admitted during the

hearing that the essence of the invention is controlling

the EV charging process remotely, as opposed to

someone physically performing it at the charging

station. Hr’g on Motion to Dismiss 43:10-16.

The Court also takes preemption concerns into

consideration. As it stands, Claim 1 would preempt

any other person or company from sending a request,

receiving a command, and executing a command (to

turn electric supply on and off) over a network

(through generic networking equipment such as a

transceiver, data control unit, wide area network, and

53a

server). Enforcing such a claim would preempt competitors from developing other, more specific, methods

for managing the power grid over a network or creating customized user experiences. An example presented

by SemaConnect, for which it is being accused of

infringement, is incorporating solar and wind energy

into the charger’s operation at certain times which

would require communicating with the charger over

a network. Def.’s Mem. 26-27, ECF No. 41-1. This

approach would wholly be preempted by Claim 1

and was certainly not disclosed in the specification

as contemplated by the inventors. Claim 1 may also

preempt competitors from applying a credit card

system to EV charging stations, as that would require

communicating with a remote server (credit card

company) to verify the credit card and pin number.

SemaConnect convincingly indicates how the claims

merely limit the abstract idea to a field of use. A single

word, “vehicle,” can be replaced by any other electronic

device without changing the character of the claim:

An apparatus, comprising a control device to turn

electric supply on and off to enable and disable

charge transfer for electric [coffee-maker / dishwasher / dryer / hot water heater / vehicle]; 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 connected to the remote server

through a wide area network; and a controller,

coupled with the control device and the transceiver, to cause the control device to turn the

electric supply on based on communication from

the remote server.

Def.’s Reply 10, ECF No. 45 (emphasis added). In

effect, the patent claim attempts to monopolize the

54a

idea of sending requests and executing commands over

a network to operate an electronic device (in this case,

an EV charging station). This is an abstract idea.

Lastly, the Court looks to whether the claim is

clearly directed to an improvement in technology as

opposed to the abstract idea of sending a request,

receiving a command, and executing the command

over a network to operate a device. The specification

states that the patent purports to solve the problem of

electric grid stabilization and to provide customizable

features to the end-user.

The specification states that a utility company may

send requests to the server to reduce load by turning

off charging stations. ’715 Patent 10:50-60. The specification also states that connecting charging stations

to a server allows the user to “find[ ] the recharging

station, control[ ] the facility, and pay[ ] for the electricity consumed” and to be charged customized prices

depending on their subscription status and location of

the charging station. Id. at 1:35-38. However, specific

solutions to these problems are completely absent

from the claims. Moreover, finding an open parking/

charging space, controlling the facility (by sending

communications over a network), verifying a payment

source over a network, and charging a custom price

based on preset rules have all been held to be categorically abstract (and patent-ineligible). Open Parking,

2016 WL 3547957, at *8; In re TLI, 823 F.3d at 612;

Smart Sys., 873 F.3d at 1371; Versata, 793 F.3d at

1312-13. Therefore, the only possible improvements to

technology that may be found in the claimed invention

are those related to the functioning of the electric grid,

not to user-related convenience features.

Claim 1 is inapposite to the holdings in Enfish,

McRo, Amdocs, Visual Memory, and Thales where the

55a

Federal Circuit held that the claims were directed to

an improvement in technology instead of an abstract

idea. Enfish involved a specific database structure

which improved the way a computer stores and

retrieves data. 822 F.3d at 1335-6. McRO involved the

incorporation of specific rules for producing accurate

and realistic lip synchronization and facial expressions in animated characters. 837 F.3d at 1315. Amdocs

involved a specific distributed network architecture

which reduced network congestion when collecting

massive amounts of data. 841 F.3d 1288, 1300. Thales

involved a specific configuration of inertial sensors and

the use of a mathematical equation for calculating the

location and orientation of an object. 850 F.3d 1343,

1345. Lastly, Visual Memory involved a specific,

improved data memory system that configured a

programmable operational characteristic of a cache

memory based on the type of processor connected to

the memory system. 867 F.3d at 1262.

Here, ChargePoint contends that the problem is

solved merely by connecting charging stations to a

network via a server, giving a user the ability to

control an individual charging station. The Federal

Circuit has consistently held that sending, receiving,

or transmitting data over a network, without something more, is an abstract idea. Elec. Power, 830 F.3d

at 1353-4; Open Parking, 683 Fed. Appx. 932 (Mem);

Content Extraction, 776 F.3d at 1347. Nothing more is

described in this claim. The claim merely recites

sending a request/command from one point to another

and “causing” that command to be executed in a

normal and expected way (turning on or off). It achieves

this through the conduit of generic networking equipment. In this context “something more” might be

present if there were specific rules for deciding how

the request was processed and transformed into a

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command to execute it or how the server decides to

manage demand response requests. This claim contains no such limitation and is not directed to an

improvement in the functioning of the electric grid.

This Court rejects ChargePoint’s reliance upon the

district court decisions in Chamberlain Group v.

Linear, 114 F. Supp. 3d 614 (N.D. Ill. 2015) and Canrig

Drilling Tech. Ltd. v. Trinidad Drilling L.P., Civ.

Action No. H-15-0656, 2015 WL 5458576 (S.D. Tex.

Sept 17, 2015). Neither decision is binding precedent.

Moreover, the Canrig court determined that the subject

claims were directed to overcoming challenges with

directional oil drilling through a specific apparatus

and process for controlling the rotation of the drill, as

opposed to the abstract idea of “computer-assisted

rotation.” 2015 WL 5458576 at *4. The claims in the

instant case do not describe a specific process for

overcoming a technological problem in the EV charging process, but merely recite a categorically abstract

idea of sending and receiving communications to a

device over a network through generic equipment

conduits.

This Court rejects the Chamberlain unappealed

district court decision. The Chamberlain court held

that claims involving controlling a garage door opener

over a network “have a clear concrete and tangible

form in that they are directed to monitoring and

opening and closing a movable barrier—a particular

tangible form, e.g., a garage door, gate, door, or

window.” 114 F. Supp. 3d at 626. The Chamberlain

court also held that the claims were directed to a

technological improvement because “the garage door

opener can do new things like provide for remote

monitoring and control of the garage door opener.” Id.

at 627. This Court finds that the reasoning is not

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convincing and was written without the benefit of

many of the Federal Circuit opinions cited herein. The

alleged technological improvement in Chamberlain

amounts to nothing more than operating an existing

device from a remote location over a network. In other

words, the Chamberlain court held that any device

connected to a network inherently possesses a technological improvement by virtue of being connected to a

network because it can send and receive communications and can be operated remotely. This Court does

not accept that position and finds that it contravenes

the purpose of the § 101 eligibility standard and wellestablished Federal Circuit and Supreme Court case

law.

Claim 1 of the ’715 Patent is simply too broad to be

directed to an improvement in an EV charging system.

Rather, it encompasses the abstract idea of sending a

request, receiving back a command, and executing a

command to operate a device in a known and expected

way. Limiting a claim to a particular field of use (EV

charging) will not save an abstract claim from being

abstract. Berkheimer, 2018 WL 774096, at *6.

ii. Claim 2

Claim 2 of the ’715 Patent adds to the limitations of

Claim 1 “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

coupler on and off.” ’715 Patent 12:19-22. The Court

finds that the added limitation in Claim 2 does not

change the character of the claim as a whole. It is still

directed to the abstract idea of sending a request,

receiving a command, and executing the command in

an expected way (over a network) to turn electric

supply on and off. The electrical coupler is nothing

more than a conductor that connects the vehicle to the

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charging station. The existence of the electrical

coupler does not improve on the functioning of

technology in any way. In fact, it is merely a known

and necessary component of an EV charging station.

The station cannot charge a vehicle if it is not

connected. The addition of the electrical coupler helps

to clarify how the executed command reaches the

desired destination (the vehicle) in this particular field

of use (EV charging), but the character of the claim

still is directed to the communication aspect as

described in the Claim 1 analysis. Thus, Claim 2, like

Claim 1, is directed to the abstract idea of sending a

request, receiving a command, and executing the

command over a network.

b. The ’131 Patent (Claims 1 and 8)

Claims 1 and 8 are:

1. An apparatus, comprising:

a control device to control application of charge

transfer for an electric vehicle;

a transceiver to communicate with a remote

server via a data control unit that is connected to

the remote server through a wide area network

and receive communications from the remote server,

wherein the received communications include

communications as part of a demand response

system; and

a controller, coupled with the control device and

the transceiver, to cause the control device to

modify the application of charge transfer based

on the communications received as part of the

demand response system.

* * *

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8. The apparatus of claim 1, wherein the

communications 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.

’131 Patent 12:7-19, 50-53.

Claim 1 of the ’131 Patent discloses an apparatus

(charging station) with substantially the same core

components as those described in the ’715 Patent. One

notable difference is that instead of switching electric

supply on and off, the ’131 Patent “control device” is

more broadly said to “control[ ] application of charge

transfer.” Id. Furthermore, instead of receiving any

communications from the remote server, the ’131

Patent “transceiver” specifically receives communications related to a “demand response system.” Id.

Lastly, the ’131 Patent “controller” causes the “control

device” to “modify application of charge transfer . . .

based on the demand response system” rather than

merely switching the “control device” on or off. Id.

Claim 8 depends on claim 1 and limits the

communications from the demand response system to

“power grid load data.” Id. at 12:53.

i. Claim 1

Viewed in its entirety to ascertain the character as

a whole, Claim 1 of the ’131 Patent is directed to

receiving a command and executing the command to

operate a device over a network to modify electric

supply in an expected way. The Court finds that this

is an abstract idea.

Looking to the claim’s language, Claim 1 recites a

control device, a transceiver, and a controller, much

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as in the ’715 Patent. The control device “controls

application of charge transfer.” ’131 Patent 12:8-9. The

transceiver “communicate[s] with a remote server via

a data control unit that is connected to the remote

server through a wide area network and receive[s]

communications from the remote server, wherein the

received communications include communications as

part of a demand response system.” Id. at 10-15

(emphasis added). The controller “cause[s] the control

device to modify the application of charge transfer

based on the communications received as part of a

demand response system.” Id. at 16-19 (emphasis

added). Thus, the claim is directed to receiving a

command and executing the command in an expected

way, over a network, to modify application of charge

as part of a demand response system.

As distinct from the ’715 Patent, Claim 1 of the ’131

Patent does even not require sending a request, it

merely requires receiving a command and executing it.

The command is limited to communications as part of

a “demand response system.” The control device in this

claim appears to be the same control device as in the

’715 Patent, which also permits modifying application

of charge as opposed to simply switching it on and off.

Upon inspection of the specification, it appears that

the “demand response system” originates with the

utility company. ’131 Patent 4:45-58 (“the utility company’s Demand Response”); see also 10:50-60 (“load

management data from the utility company”). The

“demand response system” may include requests from

the utility company to “limit the ability to recharge,”

“[limit] the recharge rate,” or even send electricity

back from a vehicle to the power grid (i.e., V2G). Id. at

1:39-67; 10:50-60. First, the utility company “send[s] a

message” to the server, “requiring a reduction in load.”

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Id. at 10:50-60. A command is sent from the server to

individual charging stations to “turn off charging of

some vehicles . . . depend[ing] on subscriber profiles

and the requirements of the Demand Response system.” Id. Subscriber profile information may include

customer preferences such as whether to charge during high demand, to only charge during low power

rates, or to sell back to the power grid. Id. at 4:45-58.

Thus, the communication sent to the charging device

from the server is a command to either turn on/off

or increase/decrease charge. The decision as to which

command is sent occurs at the server level and may

be based on a demand response system of the utility

company.

While the specification purports that the ’131 Patent

improves the technological function of the electric

power grid, these improvements are not embodied in

Claim 1. The improvements, as alleged in the specification, occur when the demand response request is

sent to the server. The server then decides which

stations to turn on/off or to what extent charge should

be increased/decreased. This decision is then sent to

individual charging stations which execute the command through generic controller and control device

components. In other words, the charging station

receives a command (albeit a command that originated

as part of a demand response system before being

processed through the server) and executes the normal

and expected function of the charging station, turning

on/off or modifying charge sent to a vehicle. The decisionmaking as to which (and the extent to which) chargers

are affected in response to a utility company’s demand

response system, i.e., how the alleged improvement is

achieved, occurs in the server. These processes are not

embodied in Claim 1. Claim 1 merely refers to relaying

whatever decision is made by the server to the charg-

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ing station. As discussed above in the ’715 Patent

discussion, receiving a communication over a network

and executing the command in an expected way using

generic computing and networking components as

conduits for that purpose is an abstract idea. In re TLI,

823 F.3d at 612; Two-Way Media, 874 F.3d at 1337.

The ’131 Patent does not describe a specific solution to

a technological function. The improvement may be

enabled by what is claimed in Claim 1 (by virtue of

being connected to the Internet), but the specification

reveals that the improvement itself arises when the

server makes a decision when it receives a demand

response request from the utility company.

Consideration of the breadth of the claim and

preemption concerns also reveal the abstract nature of

the claim. Claim 1 effectively preempts any person or

competitor from developing a specific method for managing electric grid stabilization. Certainly, charging

stations (or any other electronic devices) would need

to communicate with the electric grid for this to occur.

As discussed above in regard to the ’715 Patent,

SemaConnect’s product sheets propose its own way of

managing the demands of the electric grid by incorporating solar and wind energy sources into its charging

stations at certain times.

Another approach might be a decision by the server

to reduce charging at residential facilities during the

day while most people (and their vehicles) are at work.

This approach would wholly be preempted if ChargePoint

were to obtain a monopoly on sending any command

(as part of a demand response system) to a charging

station and executing that command (by turning on/off

or reducing/increasing electric flow). This constitutes

an abstract idea because it “purport[s] to monopolize

every potential solution to the problem” which “impede[s]

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innovation more than it would tend to promote it,

thereby thwarting the primary object of the patent

laws.” Elec. Power, 830 F.3d at 1356; Alice, 134 S. Ct.

at 2355 (citations omitted).

ChargePoint alleges that the ’131 Patent invention

has enabled the improvements related to electric

power grid stabilization merely by connecting charging stations to a network via a server so that they can

send and receive communications, even when the

specification reveals something different. Sending and

receiving communications over a server and executing

the command in an expected way is an abstract idea.

ii. Claim 8

For the same reasons discussed above for Claim 1 of

the ’131 Patent, Claim 8 is also directed to the abstract

idea of receiving a command and executing the command in an expected way over a network to modify

electric supply. Claim 8 merely includes every limitation of Claim 1 but limits the “communications received

[from a server] as part of a demand response system”

to “power grid load data.” ’131 Patent 12:50-53. The

Court does not view this limitation as having an

effective difference on the character of the claim as

compared to Claim 1. In light of the specification,

demand response information or power grid load data

(if there is even a difference) is sent to the server, after

which a decision is made to turn on/off or limit charge

to individual charging stations. This decision (command)

is then communicated to charging stations over a

network. Whether the decision in the server arose

from a “demand response system” or “power grid load

data” is of no concern because that decision occurs in

the server and is not embodied in Claim 1 (or 8). What

is included in the claim is the communication of that

decision to the charging station and executing the

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command according to the expected and normal functioning of the charging station, which is determined to

be abstract.

c. The ’570 Patent

Claims 31 and 32 of the ’570 Patent are:

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, comprising:

an electrical receptacle configured to receive an

electrical connector for recharging an electric

vehicle;

an electric power line connecting said receptacle

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 control

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

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a communication device connected to said controller, said communication device being 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.

’570 Patent 14:22-52. Claim 31 of the ’570 Patent discloses a system comprised of three main components:

a server, a data control unit (to connect a charging

station to the server via a wide area network), and a

charge transfer device (charging station). Id. The

charge transfer device comprises several of the same

core components as the ’715 and ’131 Patents including a “control device” (to switch power on and off), a

“controller” (to control the control device), and a

“transceiver” (to connect the charging station to the

data control unit which is connected to the server

via a wide area network). Id. The charging station

also includes other features such as a “communication

device” (used to connect a user’s cell phone to the

charging station via a wide area network), a “current

measuring device” (an electric meter), and an “electrical receptacle” (to connect the charging station to an

“electric power line”).

i. Claim 31

Viewed in its entirety to ascertain the character,

Claim 31 is directed to sending a request, receiving

a command, and executing the command over a

network, to turn electric supply on and off, and subsequently monitoring the results of the executed demand.

The Court finds that this is an abstract idea for many

66a

of the reasons discussed above in regard to the ’715

and ’131 Patents.

Looking to the language of the claim, Claim 31

recites a “network-controlled charge transfer device”

including a server, a data control unit, and a charge

transfer device. ’570 Patent 14:24-28. The charge

transfer device contains a transceiver, a controller, a

control device, a communication device, a current

measuring device, an electrical receptacle, and an

electric power line. Id. at 27-50. The transceiver

merely connects the charge transfer device to the

server via the data control unit. Id. at 42-45. The

control device in this claim merely switches on and off

like in the ’715 Patent. Id. at 34-35. The controller

“operates” the control device. Id. at 39-41. The communication device connects a user’s cellphone to the

charge transfer device, thus describing the origin of

the request for charge. Id. at 46-50. The electrical receptacle connects the vehicle to the charge transfer

device. Id. at 29-31. The electric power line connects

the charging device to the power grid. Id. at 32-33.

Finally, the current measuring device, “measure[s]

current flowing through said electrical receptacle.” Id.

at 36-38.

Considering the claim as a whole, the Court finds

that it is directed to a system for sending a request

(originating from a cellphone), receiving back a command (from a server), executing the command (to turn

on/off in an expected way), and monitoring the results

of the command (by measuring the electric output). As

discussed above in regard to the ’715 Patent analysis,

Counsel for ChargePoint admitted that “[t]he essence

of the system is charging stations that can be controlled remotely and can be accessed remotely by all of

67a

the shareholders.” Hr’g on Motion to Dismiss 43:10-16,

ECF No. 48.

As discussed above, sending and receiving communications over a network and executing a command in

an expected way is an abstract idea. Merely monitoring the output of the command is also abstract. Elec.

Power, 830 F.3d at 1353-54. The data collected from

the monitoring device is not used in conjunction with

the other claim components for any particular purpose

to improve the system. Rather, according to the specification, it is displayed to the customer and used to

calculate the cost of the transaction and perhaps

used for tax reports. ’570 Patent at 2:11-20; 4:37-43.

Monitoring the amount of a commodity sold and

determining a price is a long prevalent practice. The

specification does not make clear how the data collected from the monitoring device integrates into the

system, merely stating that it is ultimately reported

back to the customer on an invoice. Id. at 4:38-44.

Furthermore, the additional claim limitations unrelated to the communication system (electrical receptacle

and electric power line) merely limit the abstract idea

to a field of use (EV charging) and are peripheral

elements to a standard EV charging station. The true

character of the claim (a communication system to

send/receive/execute a command and monitor results)

is consistent with the specification in that the invention purports to fill the need for a “communication

network.” ’715 Patent 1:35-8; 2:8-10. Applying a communication network to send/receive/execute commands

is an abstract idea, and an improvement to the technological function of EV charging stations, systems, or

the electric grid is not clear in the limitations of the

claims.

68a

ii. Claim 32

Claim 32 includes every element of Claim 31 but

limits the wide area network (used by both the data

control unit and communication device) to the

Internet. The Court finds that this does not alter the

abstract character of the claim. Limiting an abstract

idea to the Internet does not save the claim from

abstraction. Using the Internet, as opposed to some

other type of wide area network, does not alter the

abstract character of the claim. The device is simply

being used as a conduit to implement the abstract idea

of sending and receiving communications over a

network to operate a device in an expected way.

d. The ’967 Patent

Claims 1 and 2 of the ’967 Patent are:

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 device that

indicates to the network-controlled charge transfer

device to enable charge transfer; and

transmitting a communication for the networkcontrolled charge transfer device to modify

application of charge transfer as part of a demand

response system.

* * *

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2. The method of claim 1, wherein determining

whether to enable charge transfer includes validating a payment source for the charge transfer.

’967 Patent, 12:6-21. Claim 1 of the ’967 Patent

discloses a method (performed in a server) comprised

of four steps: (1) receiving a request to enable charge

transfer from a charging station; (2) determining

whether to enable charge transfer, (3) transmitting a

command to the charging station to enable charge

transfer, and (4) transmitting a command to “modify

application of charge as part of a demand response

system.” Id.

i. Claim 1

Viewed in its entirety to ascertain the character

as a whole, Claim 1 of the ’967 Patent is directed to

receiving a request, processing the request, and sending a command over a network (to turn electric supply

on and off and/or modify electric charge as part of a

demand respond system). The Court finds that this is

inherently an abstract idea.

Claim 1 recites a “method in a server” comprising

receiving a request (for charge transfer from a charging

station, determining whether to enable charge transfer)

(i.e., processing the request), transmitting a communication to a charger to enable charge transfer (i.e., sending

a command), and transmitting a communication to

modify electric charge based on a demand response

system. ’967 Patent 12:6-18. Receiving, determining,

and transmitting data/communications, without something more, has repeatedly been found to be an abstract

idea. In re TLI, 823 F.3d at 612-3; Elec. Power, 830

F.3d at 1353-4. Content Extraction, 776 F.3d at 1347.

These claims are not directed to an improvement in

the functioning of technology because they do not

70a

provide any meaningful limitations. Rather, they

describe generic processes performed by a server:

receiving data, processing data, and transmitting

data. The claims limit the type of data to a field of

use (charge requests for EV charging and demand

response information) but fail to describe how the

“determining” step is performed or how the server

decides to implement a demand response request from

a utility company.

The asserted inventive step, as described in the

specification, arises in the method of “determining

charge transfer parameters” in the server. ’967 Patent

4:47-60. The specification provides only two possibilities for how the server might determine whether to

turn on/off or increase/decrease charge: (1) based on

user profile settings or (2) based on “the requirements

of the Demand Response system” with no further specification as to what this might be other than that it is

received by the utility company. ‘976 Patent 10:50-60.

The Court recognizes that the specification recites

possibilities for using profile settings as part of a

demand response system such as not charging during

high demand, only charging during low power rates,

and selling electricity back to the grid. Id. at 4:45-58.

However, these limitations simply are not recited in

the claim. While the specification can help to explain

the purpose and meaning of the claims, limitations cannot be read into the claims. Furthermore, determining

whether to alter charge “based on the requirements of

the Demand Response system [from the utility company],” instead of using user profile information, amounts

to nothing more than relaying a communication (from

the utility company) over a network to a charging

device through a server.

71a

Mere recitation of generic server processes, without

claiming any kind of specific process whatsoever, constitutes an abstract idea and would foreseeably preempt

anyone from using a server to transmit commands

related to powering on a device or implementing a plan

to improve electric grid load functionality. This type of

claim is abstract and is the very kind that Alice sought

to prevent from being monopolized.

ii. Claim 2

Claim 2 incorporates every limitation of Claim 1 but

adds a limitation that the “determining” step includes

validating a payment source. Validating a payment

source over a network has been determined to be abstract

(and non-inventive) time and time again. Smart Sys.,

873 F.3d at 1371; buySAFE, 765 F.3d at 1350.

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d

1366, 1370 (Fed. Cir. 2011). The claim is abstract.

C. Step Two: Inventive Concept Test

Because each of the eight Asserted Claims are found

to be directed to an abstract idea, the Court must

proceed to step two to determine if the abstract idea

rises to the level of a patent-eligible inventive concept.

1. Legal Standard

The court must consider the elements of the claim,

both individually and as an ordered combination, to

assess whether the additional elements transform the

nature of the claim into a patent-eligible application of

the abstract idea. Two-Way Media, 874 F.3d. 1329,

1338 (Fed. Cir. 2017); see also Bascom Global Internet

Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350

(Fed. Cir. 2016) (an inventive concept may be found in

the non-conventional and non-generic arrangement of

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components that are individually well-known and

conventional).

The Federal Circuit and Supreme Court have

identified several matters that may tend to show an

inventive concept. For example, as discussed in the

step one analysis, claims reciting a specific application

of an abstract idea that improves upon the functioning

of a computer or other technology or technical field

may embody an inventive concept. Enfish, 822 F.3d at

1335-6; McRO, 837 F.3d at 1315; Amdocs, 841 F.3d at

1300. Furthermore, claims that include elements (or

combinations of elements) that go beyond well-understood, routine, and conventional activities in the field

may also embody an inventive concept. Bascom, 827

F.3d at 1350 (the distribution of functionality within a

network, by installing internet filtering tools in servers

remote from the end-user, was inventive because that

specific network arrangement overcame problems in

the prior art such as susceptibility to hacking, dependence on local hardware/software, and one-size-fits-all

schemes); DDR Holdings, LLC v. Hotels.com, L.P., 773

F.3d 1245, 1248 (Fed. Cir. 2014)(modifying conventional hyperlink protocol to create a hybrid webpage

that combines visual elements of a host site and a

third-party site was inventive because it overcame the

problem of host sites losing website views and sales to

the third-party).

Whether the claim elements (or combination of elements) are well-understood, routine, and conventional

in the field can present a question of fact. Aatrix Software,

Inc. v. Green Shades Software, Inc., No. 2017-1452,

2018 WL 843288, at *5 (Fed. Cir. Feb. 14, 2018). A

court may look to the specification and complaint on a

motion to dismiss to determine if there are factual

disputes regarding the convention of the field at the

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time of the invention. Id. While the specification may

identify improvements to functionality of technology,

which may create factual disputes regarding the convention of the field, a court “must analyze the asserted

claims and determine whether they [actually] capture

these improvements.” Berkheimer, 2018 WL 774096,

at *6; RecogniCorp, LLC v. Nintendo Co., 855 F.3d

1322, 1327 (Fed. Cir. 2017) cert. denied, 138 S. Ct. 672

(2018) (“To save a patent at step two, an inventive

concept must be evident in the claims.”); Automated

Tracking Solutions, LLC v. Coca-Cola Co., No. 20171494, 2018 WL 935455, at *5 (Fed. Cir. Feb. 16,

2018)(claims for an RFID system were broad and did

not embody any unconventional, inventive activity

as alleged in the specification and complaint). If the

claims are written with such a high level of generality

that the alleged unconventional improvements are not

captured by the claims, or if admissions are made

regarding the convention in the field, a court may

conclude that the abstract concept cited in the claims,

as a matter of law, is non-inventive (and thus patentineligible). Id. at *6-7. Furthermore, a determination

of whether a particular technology is well-understood,

routine, and conventional goes beyond a disclosed

piece of prior art that predates the effective filing date

of the invention. Id. at *6.

The Federal Circuit and Supreme Court have

held that a mere recitation of concrete or tangible

components, such as generic computer or networking

components, or adding the words “apply it with a

computer” will not convert an abstract idea into a

patent-eligible invention. Alice, 134 S. Ct. at 2360,

2368; Intellectual Ventures I LLC v. Capital One

Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (a

“database” and a “communication medium” “are all

generic computer elements”); buySAFE, 765 F.3d at

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1355 (“That a computer receives and sends the information over a network—with no further specification—

is not even arguably inventive.”); In re TLI, 823 F.3d

at 613 (“[T]he components must involve more than

performance of well-understood, routine, conventional

activit[ies] previously known to the industry”); Elec.

Power, 830 F.3d at 1355 (The “[i]nquiry therefore must

turn to any requirements for how the desired result is

achieved.”).

Lastly, confining the use of the abstract idea to a

particular technological environment fails to add an

inventive concept to the claims. Affinity Labs, 838 F.3d

at 1259.

2. The Abstract Ideas in the Asserted

Claims are not Patent-eligible

a. The ’715 Patent

i. Claim 1

The Court held in the step one discussion, that

Claim 1 is directed to sending a request, receiving a

command, and executing the command over a network

to operate an EV charging station. The Court finds

nothing in Claim 1 that amounts to a patent-eligible

inventive concept.

First, the Court looks at the individual components

of the claims: a control device, a controller, a transceiver, a server, a data control unit, and a wide area

network. Each of these components amounts to generic

computing and networking equipment that were wellknown, routine, and conventional at the time of the

invention. The specification does not purport that any

of these components was anything different. Nothing

in the specification indicates that the control device,

which turns electric supply on and off, performs any-

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thing other than its normal and ordinary function of

turning on and off (i.e., a switch). Nothing in the

specification indicates that the controller is anything

more than a generic device (i.e., a processor) that

controls things, something that exists in all computers. See ’715 Patent 7:44 (“[the control device] is

controlled by the controller.”). In describing different

communication devices in the “Background of the

Invention” section, ChargePoint admits that transceivers already existed and tells the reader what they

are. Id. at 2:30, 35, 54, 64. (“A wireless local area

network transceiver is used for radio frequency

communication over tens of meters or more between

devices.”). The specification recites a well-understood,

routine, and conventional server with no alleged improvements. Id. at 9:4-14 (“The server comprises a computer,

report generator, and database.”). The data control

unit is nothing more than “a bridge between the LAN

and WAN, and enables communications between the

[charging station] and the server.” Id. at 6:23-25. The

specification does not state that the patent claims a

new device for bridging a LAN and WAN. This clearly

is a well-understood, routine, and conventional device.

Lastly, a wide area network assuredly has not been

invented in this patent. Id. at 2:64-3:6.

Next, the Court must determine whether ordered

combinations of these components give rise to a patenteligible inventive concept. In doing so, the only logical

grouping of these components is to separate them by

networking equipment and EV charging equipment.

The transceiver, server, data control unit, and wide

area network combine to create a system which introduces generic networking capabilities to a device. The

specification appears to assert the invention of the

concept of using a transceiver to connect to a data

control unit through a local area network that con-

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nects to a server through a wide area network. Id. at

3:32-35. This, in fact, would be the creation of the wide

area network itself. In describing wide area networks

in the “Background of the Invention,” the specification

states that “[t]he Internet is a worldwide, publicly

accessible plurality of interconnected computer networks. . . . Many local area networks are part of the

Internet.” Id. at 3:22-26. Thus, connecting a device (a

computer/charging station) to a local area network

device (some kind of data control unit) which communicates with a larger wide area network (the Internet)

clearly existed and was well-understood, routine, and

conventional at the time of the alleged invention.

Lastly, the networking unit must be combined with

the charging station unit (the controller and control

device) to search for an inventive concept. The Court

does not find one here.

ChargePoint alleges to have invented the concept of

introducing networking capabilities to a charging

station. The specification states that “[t]here is a need

to effectively integrate these wide area networks, local

area networks, and short range communications devices

into systems used for recharging electric vehicles.” Id.

at 3:30-33. In other words, there was a need to apply

networking capabilities to charging stations. This is

non-inventive and patent-ineligible as a matter of law.

Recitation of generic computing and networking equipment, and adding the words “apply it” to an existing

process or device in a particular field (a charging

station) so that the device may send and receive

communications is a non-inventive abstract idea.

Alice, 134 S. Ct. at 2360. Introducing networking

capabilities to operate an existing device merely serves

as a conduit to performing the abstract idea of sending

requests, receiving commands, and executing commands

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over a network. As noted above in the step one discussion, none of the improvements to the EV charging

system or electric grid that are effectuated by connecting the charging station to a network are presented

in this claim. Based on the lack of an improvement in

the claims, there is no factual dispute. Therefore, the

abstract nature of the claim (sending a request, receiving a command, and executing the command in an

expected way over a network) does not give rise to an

inventive concept. Thus, Claim 1 is not eligible for

patent protection.

ChargePoint seeks to rely upon the decision in

Bascom to support its argument that the abstract idea

gives rise to a patent-eligible inventive concept. In

Bascom, the patent claims described a system that

moved an Internet content-filtering process from local

servers and computers and placed them on the ISP’s

remote server. 827 F.3d at 1344-45. The specification

described that this improved the functionality of existing filtering programs because the claimed process

was less susceptible to hacking by end-users and gave

users the ability to customize filtering for users within

their individual network. Id. The Court held that the

claims were directed to the abstract idea of filtering

content over the Internet, but that that abstract idea

passed the step two test because the claims overcame

specific problems with existing systems. Id. at 1350.

ChargePoint contends that by virtue of using a

server to connect its charging stations to a network,

which allows for the possibility of creating user

accounts, that its claims are similar to the claims in

Bascom and are thus inventive. Pl.’s Resp. 28-32, ECF

no. 43. However, ChargePoint fails to appreciate the

underlying reason for the inventive concept finding in

Bascom. The Bascom court stated that the claims were

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inventive because moving the filtering scheme from a

local server to a remote server reduced susceptibility

to hacking and allowed administrators to create

personalized settings for users related to the Internet

filtering process. Bascom, 827 F.3d at 1350. The Court

went on to say that:

The claims do not merely recite the abstract idea

of filtering content along with the requirement to

perform it on the Internet, or to perform it on a

set of generic computer components. Such claims

would not contain an inventive concept . . . Nor do

the claims preempt all ways of filtering content on

the Internet; rather, they recite a specific, discrete

implementation of the abstract idea.

Id. The claims in the ’715 patent do not purport to have

overcome a functional issue in EV charging systems

by moving a software algorithm from a local device to

a remote server. Moreover, the user profiles herein

involve customer preferences related to business transactions (validating a payment source, receiving custom

payment rates, choosing to charge when electricity

costs are low), not the core functioning of the system

itself such as the internet filtering process in Bascom.

The claims do not even refer to a user profile or any

process for using user profile information to make a

decision to effectuate charge transfer. Instead, Claim

1 merely recites the process of sending a request to a

server and receiving back a command which is executed

in a known way. Using a server as a medium to send

and receive communications to a device, without something more, is not inventive.

ii. Claim 2

Claim 2 is not eligible for patent protection for the

same reason as Claim 1. Claim 2 merely adds the

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electrical coupler component to the other components

of the claims. The electrical coupler alone was wellunderstood, routine, and conventional. The specification

actually makes no mention of an “electrical coupler”

but does refer to an “electrical connector,” which connects the charging station to the electric vehicle. ’715

Patent at 7:40-41. The patent does not purport to have

invented an electrical coupler (i.e., a wire). Combining

the electrical coupler to the other components of Claim

1 also does not give rise to an inventive concept. An

electrical coupler is merely a standard component of a

charging station and narrows the claim to the field of

use. It describes how the abstract idea of sending a

request, receiving a command, and executing the command in an expected way (turning the charging station

on/off) would ultimately reach the electric vehicle.

Thus, the Court cannot find an inventive concept, and

Claim 2 is ineligible for patent protection.

b. The ’131 Patent

i. Claim 1

The Court holds that the abstract nature of Claim 1

of the ’131 Patent does not give rise to an inventive

concept and is thus ineligible for patent protection.

The Court has determined that the only difference

from the ’715 Patent is that the control device in Claim

1 of the ’131 Patent may modify charge as opposed to

simply turning on or off. The communications received

from the server are also limited to those related to a

demand response system.

The specification does not purport to have invented

a control device which is capable of modifying charge.

Thus, this limitation alone was well-known, routine,

and conventional. As the Court discussed in the step

one analysis, the communications received as part of a

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demand response system are merely commands to

either turn on/off or increase/decrease charge. The

demand response communication from the utility company ends at the server and is transformed into a

command which is communicated to a particular

charging station. Thus, the Court must next look to

whether the ordered combination of the networking

components and the controller/control device amount

to an inventive concept when receiving commands that

originated as part of a demand response system. For

many of the reasons discussed above in the ’715 Patent

discussion, the Court finds that it does not. The communications received as part of the demand response

system are nothing more than commands to turn

on/off or increase/decrease charge. These commands

are then executed by the controller/control unit.

ChargePoint alleges that the ability to modify

charge in response to a demand response system is the

inventive concept. However, the specification tells a

different story. In the “Background of the Invention”

section, the specification states that:

Demand Response is a mechanism for reducing

consumption of electricity during periods of high

demand. For example, consumer services such as

air conditioning and lighting may be reduced

during periods of high demands according to a

preplanned load prioritization scheme.

’131 Patent at 1:45-49.

Thus, the specification itself provides that the concept

of responding to demand response requests already

existed as applied to air conditioning and lighting. The

specification also states that the concept of vehicle-togrid (V2G) already existed but was “principally being

used in small pilot schemes.” Id. at 2:2. The specifica-

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tion further states that “[t]here is a need for more

widely available Demand Response and V2G to assist

with peak load leveling.” Id. at 2:3-4 (emphasis added).

In essence the concept of fluctuating charge based on

demand response already existed, but there was a

need for more of it in the EV charging field. In other

words, the specification stated that the combination of

connecting generic networking equipment to a charging

device to carry out a demand response plan already

existed and was well-understood, routine, and conventional. The need was for more of it and for “an efficient

communication network” to help implement it. Id. at

2:10-12. The alleged invention filled the need by

making networked stations more widely available and

by connecting its charging station to a network with

generic networking equipment (as established in the

’715 analysis). This does not amount to an inventive

concept. Narrowing the known concept of responding

to a demand response system to a particular field, in

this case EV charging, does not make the claims any

more inventive. Affinity Labs, 838 F.3d at 1259.

ii. Claim 8

Claim 8 is not eligible for patent protection for the

same reason as Claim 1. The only added limitation

is that the communications received as part of the

demand response system are limited to power grid

load data. As we have repeatedly established, there is

no functional difference. The commands that ultimately are sent to the charging station are commands

to turn on/off or increase/decrease charge. Whether or

not they originated as a demand response or as power

grid load data (if there is even a difference) bears no

distinction. This information is sent to the server

which decides what to do with the information and

sends out a command to the charging station. The

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same analysis for Claim 1 applies to Claim 8. The

Claims are not eligible for patent protection.

c. The ’570 Patent

i. Claim 31

The Court stated above in the step one analysis that

Claim 31 is directed to sending a request, receiving a

command, and executing the command over a network

to operate an EV charging station and subsequently

monitoring the results. The Court finds nothing in

Claim 31 that amounts to a patent-eligible inventive

concept.

Individually, none of the limitations amounts to

an inventive concept. Each of the components were

clearly well-understood, routine, and conventional. As

established in the ’715 analysis, a server, data control

unit, control device, controller, and transceiver were

all well-understood, routine, and conventional. The

additional “communication device” for connecting a

cellphone to the charging station is nothing more than

another transceiver. The specification does not purport to have invented a current measuring device, an

electrical receptacle, or an electric power line.

As an ordered combination, the components can be

separated into networking components and standard

charging station components. As previously established,

the networking components were clearly well-understood,

routine, and conventional. The combination of the networking equipment with the charging station equipment

also does not amount to an inventive concept. For the

same reasons as in the ’715 Patent analysis, the

ordered combination merely serves as a conduit for

carrying out the abstract idea of sending requests,

receiving commands, executing the commands in a

known way, and monitoring the results. The claims

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are not drawn to any of the alleged technological

improvements in the specification. Introducing the

communication device (transceiver), which connects to

a cellphone, merely describes the source of the request

to charge. The only alleged improvement that might

be captured by Claim 31 is “the need for finding the

recharging facility, controlling the facility, and paying

for the facility,” all of which are categorically abstract

and non-inventive concepts. Open Parking, 683 Fed.Appx.

932 (Mem); In re TLI, 823 F.3d at 612; Smart Sys., 873

F.3d at 1371. The added current measuring device for

monitoring electric power consumption also does not

amount to an inventive concept. Monitoring data

(electric consumption) and reporting it back to a user

with no further specification is not inventive. Elec.

Power, 830 F.3d at 1353-4.

Because Claim 31 does not capture any of the

alleged improvements, there is no factual dispute

blocking dismissal. Claim 31 merely serves as a

conduit for carrying out the abstract idea and is not

eligible for patent protection.

ii. Claim 32

Claim 32 limits the wide area network used to

connect the data control unit to the server (and the

cellphone to the charging station) to the Internet.

Certainly, the Internet was well-known, routine, and

conventional at the time of the invention, and limiting

the wide area network in Claim 31 to the Internet does

not change the analysis. ’570 Patent at 3:17-27. Claim

32 is also not eligible for patent protection.

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d. The ’967 Patent

i. Claim 1

The Court concluded above that Claim 1 of the ’967

Patent is directed to receiving a request, processing

the request, and sending a command over a network

(to turn electric supply on and off and/or modify electric charge as part of a demand respond system). The

Court finds that this abstract idea does not rise to the

level of patentability.

Individually, each of the claim limitations were

inherently well-understood, routine, and conventional.

The specification of the patent does assert the invention of the step of receiving a request within a server.

The specification does not purport to have invented

transmitting a command over a network through a

server. The specification does not purport to have

invented a “determining” or “processing” step within a

server.

The specification does purport to have invented the

combined method within a server of receiving a request,

determining whether to grant the request, and transmitting a command (to enable charge transfer or to

modify electric charge). This is categorically noninventive. “That a computer receives and sends [ ] information over a network—with no further specification—

is not even arguably inventive.” buySAFE, 765 F.3d at

1355. The “further specification” would be how the

server determines whether to grant the request to

charge. The determining step lies at the heart of the

inventive concept as alleged in the specification. The

determining step is the “something more” that was

missing from many of the patent-ineligible claims in

cases that were directed to sending and receiving

communications over a network. The determining step

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decides whether to convert the request for charge into

a command to turn on or modify charge. How this

occurs is the inventive concept which effectuates all of

the improvements alleged in the specification. When

the server receives a demand response request, the

server determines which charging stations to turn off,

modify charge, allow for V2G, etc. ’967 Patent at 10:5060. This decision-making process is what improves on

the functioning of the electric grid and EV charging

systems, as opposed to merely introducing the capability of sending and receiving communications over a

network.

However, not a single improvement or decisionmaking process is recited in Claim 1. The claim

perceivably would allow for any possible determining

step to take place without imposing any meaningful

limitations. In effect, the claim essentially recites

generic processing steps within a server: receiving a

communication, processing the communication (without

any further specification), and sending out a command. This is not even arguably inventive. Thus,

the claim does not give rise to a factual dispute, is not

an inventive concept, and is not eligible for patent

protection.

ii. Claim 2

Claim 2 limits the determining step to validating a

payment source. This has repeatedly been held to be a

non-inventive abstract idea that is not eligible for

patent protection. Smart Sys., 873 F.3d at 1371; Open

Parking, 683 Fed. Appx. 932 (Mem). Claim 2 is not

eligible for patent protection.

V. SUMMARY

The Court holds that each of the eight Asserted

Claims in the Asserted Patents is directed to an

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abstract idea. The Court further finds that none of the

abstract ideas, as recited in the Asserted Claims, amount

to a patent-eligible inventive concept. Connecting the

Internet to a device to send and receive communications to operate that device in an expected way,

without describing a specific process for how the

communications provide a technological improvement

(other than by virtue of being able to send and receive

communications), is an abstract idea that is not

eligible for patent protection under § 101. Therefore,

the Asserted Claims are not eligible for patent protection. Because the Asserted Claims are invalid, the

motion to dismiss shall be granted, and the Complaint

shall be dismissed.

VI. CONCLUSION

For the foregoing reasons:

1. Defendant’s Motion to Dismiss for Failure to

State a Claim [ECF No. 41] is GRANTED.

2. The following claims are found invalid under 35

U.S.C. § 101:

a. United States Patent No. 7,956,570 Claims

31 and 32;

b. United States Patent No. 8,138,715 Claims 1

and 2;

c. United States Patent No. 8,432,131 Claims 1

and 8; and

d. United States Patent No. 8,450,967 Claims 1

and 2.

3. Judgment shall be entered by separate Order.

SO ORDERED, on Friday, March 23, 2018.

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APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

————

2018-1739

————

CHARGEPOINT, INC.,

Plaintiff-Appellant,

SEMACONNECT, INC.,

Defendant-Appellee.

————

Appeal from the United States District Court for

the District of Maryland in No. 8:17-cv-03717-MJG,

Senior Judge Marvin J. Garbis.

————

JUDGMENT

THIS CAUSE having been considered, it is

ORDERED AND ADJUDGED:

AFFIRMED

ENTERED BY ORDER OF THE COURT

March 28, 2019

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

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APPENDIX D

NOTE: This order is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

————

2018-1739

————

CHARGEPOINT, INC.,

Plaintiff-Appellant,

SEMACONNECT, INC.,

Defendant-Appellee.

————

Appeal from the United States District Court for

the District of Maryland in No. 8:17-cv-03717-MJG,

Senior Judge Marvin J. Garbis.

————

ON MOTION

————

ORDER

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,

MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,

HUGHES, and STOLL, Circuit Judges.

PER CURIAM.

Appellant ChargePoint, Inc. filed a petition for

re-hearing en banc. A response to the petition was

invited by the court and filed by Appellee SemaConnect,

Inc. The petition was first referred as a petition for

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rehearing to the panel that heard the appeal, and thereafter the petition for rehearing en banc was referred to

the circuit judges who are in regular active service.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue on July 30, 2019.

July 23, 2019

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

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