IP Law Daily, PATENT—D. Ariz.: Patent to improve an individual’s physical action—such as a golf swing—was invalid, (Nov 8, 2024)

By Thomas K. Lauletta, J.D.

The patent claimed an abstract idea lacking an inventive concept that transformed the idea into being a patent eligible application.

The U.S. District Court in Phoenix, Arizona, has ruled that a patent owned by plaintiff Wyoming Intellectual Property Holdings was invalid and granted the motion of defendant Trackman to dismiss the plaintiff’s complaint for injunctive and monetary relief. The plaintiff’s patent related to the creation of computer analyses that suggested how an individual could improve a physical action—such a golf swing—to produce an improved result. The court held that the patent related to an abstract idea that did not provide an inventive concept transforming the abstract idea into a patent-eligible invention (Wyoming Intellectual Property Holdings LLC v. Trackman Inc., No. 2:23-cv-02518-JJT (D. Ariz. Nov. 7, 2024)).

The plaintiff, Wyoming Intellectual Property Holdings, owns U.S. Patent No. 9,384,671 (the ‘671 Patent), effective as of July 5, 2016. The district court summarized the plaintiff’s highly technical and complicated patent, titled “Instruction Production,” as teaching systems and methods for identifying an individual’s actual physical actions and suggesting changed actions to achieve a better result.

The defendant Trackman sells an interactive system aimed at improving an individual’s golf swing. The plaintiff asserted that the defendant’s “products including, but not limited to, the Trackman 4 system, that provides data related to every aspect of club and ball, that analyzes trajectory, shots, swings, and that emphasizes and/or instructs on potential areas of improvement” infringed on its ’671 Patent. The complaint asked the court for injunctive relief barring the defendant from further infringement of the ’671 Patent; alternatively, for the award of future royalties and monetary damages under 35 U.S.C. § 284.

Patent eligibility. The defendant moved for dismissal of the complaint under Federal Rule 12(b)(6), arguing that the ‘671 patent was invalid as it related to “nothing more than an abstract idea, and it lacks any inventive concept to transform the idea into a patent-eligible invention.”

Abstractness of the patent. A court must first determine if the patent is directed at an abstract idea when its validity is attacked for this reason. The court noted that claims focusing on “collecting information, analyzing it, and displaying certain results” are directed to an abstract idea. Here, the court concluded that the ‘671 Patent claimed a process of “collecting information, analyzing it, and displaying certain results”—a process squarely in the realm of abstract ideas.

Inventiveness requirement. Where a patent is directed an abstract idea, under the holding of Alice Corp. Pty. Ltd. V. CLS Bank Int’l, the next inquiry is to determine whether the patent contains an “inventive concept” sufficient to transform the abstract idea into a patent-eligible invention. Here, the court found that the ‘671 Patent claims were directed to an abstract idea and the individual claim components were nothing more than generic computer components. In sum, the court viewed ’671 Patent as directed at the abstract idea of training a person to better perform a task, and the patent did not arrange these generic computer components in an inventive manner creating a patent-eligible application of this abstract idea. Accordingly, the court held that the ‘671 patent’s abstract idea did not contain an inventive concept that transformed the abstract idea into a patent-eligible invention.

Claim construction. In opposition to the defendant’s motion to dismiss, the plaintiff asserted that there was a need for the court’s construction of several terms and phrases related to the ‘671 Patent. The court rejected the defendant’s argument for this need, noting that courts have repeatedly decided questions of patent abstractness before claim construction had taken place. Further, the plaintiff had not proposed any specific construction of any of the asserted terms.

The court found that the ‘671 Patent is invalid because it is not directed at patent-eligible subject matter and that the Patent’s claims do not transform its abstract idea into a patent-eligible application. The court granted the defendant’s motion to dismiss and dismissed the plaintiff’s claims with prejudice.

The Case is No. 2:23-cv-02518-JJT.

Judge: Tuchi, J.

Attorneys: Kenneth Michael Motolenich-Salas (Motosalas Law PLLC) for Wyoming Intellectual Property Holdings LLC. David Edward Funkhouser, III (Spencer Fane LLP) for Trackman Inc.

Companies: Wyoming Intellectual Property Holdings LLC; Trackman Inc.

Cases: Patent TechnologyInternet ArizonaNews