Patent Eligibility Under 35 U.S.C. 101 of Articles of Manufacture
FYF-JB, LLC sued Pet Factory, Inc. for infringing its U.S. Patent 9,681,643 (“the ‘643 patent”) covering a tug toy for animals that emits a sound when it is pulled on both sides. Pet Factory moved to dismiss FYF-JB's complaint, arguing that the asserted claims were directed to patent ineligible subject matter under 35 U.S.C. § 101. The United States District Court for the Northern District of Illinois (“the Court”) denied Pet Factory’s motion to dismiss.
Claim 1 of the ‘643 patent reads:
A tag toy comprising:
at least one gripping member and a central portion, wherein said at least
one gripping member is attached to said central portion, and
wherein said central portion further includes a noise maker,
wherein said at least one gripping member is adapted to transmit force to said central portion, and
wherein said force comprises a first lateral force directed away from the central portion in the direction of a first gripping member.
Pet Factory argued that the ‘643 patent claims were invalid as being directed to the natural law of “force and its direction.” FYF-JB responded that the asserted claims were directed to an article of manufacture that was eligible for patent protection.
The Court applied a two-step test identified in Alice to determine whether the claims recite patent-eligible subject matter. The first step under Alice is to “determine whether the claims at issue are directed to a patent-ineligible concept.” If the claims are directed to a patent-ineligible concept, courts proceed to the second step and “consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.”
Step One: Pet Factory argued that the ‘643 patent claims were directed to the natural phenomenon of “force and its direction,” which has been long used by humans in activities such as tug-of-war. According to Pet Factory, the ‘643 patent claims at best simply limit the natural law of force to the particular environment of a tug toy. FYF-JB argued that the claims were directed to an article of manufacture (a tug toy for pets), which happens to use force for its operation. The Court agreed with FYF-JB that the ‘643 patent claims were not directed to an abstract idea.
In its analysis, the Court explained that while the claims used the word “force,” it was in the context of operating the tug toy. Pet Factory asked the Court to ignore the tangible components included in the ‘643 patent claims because they were “well-understood, routine, and conventional.” But the Court pointed out that this runs contrary to the mandate that “claims must be considered as a whole” when determining the eligibility of patent protection under § 101. More importantly, the Court (in line with the updated 2019 Guidance) noted that the “well-understood, routine, and conventional” language that Pet Factory cited comes from Alice and Mayo in the context of Step Two of the Alice test. The Court noted that Pet Factory’s argument would be more appropriate as a question of whether the ‘643 patent claims are novel in light of prior art.
The Court pointed out that while Pet Factory correctly noted that reciting concrete, tangible components (e.g., the tangible form of a tug toy) is not necessarily enough to escape the reach of Alice step one, “every case Pet Factory cites for this proposition deals with method and system claims.” The Court then compared the claims at issue to other claims already found to be abstract or patent-eligible and concluded that the ‘643 Patent claims were directed to patent-eligible subject matter.
FYF-JB relied upon a number of cases where the claims were directed to articles of manufacture and were found to be patent eligible. The Court, comparing decisions relevant to analogous articles of manufacture, explained that the ‘643 patent claims “involve force but are not directed to force itself.” “Unlike the F=ma machine that operates in accordance with F=ma, the ‘643 claims do not merely state that the tug toy operates in accordance with using force; rather, they describe the features of the tug toy, and how the apparatus is designed to transmit force and activate the noise maker.” “In this way … the claims are directed to mechanical components that operate based on the principles of force. And, when considered as a whole, simply using the word ‘force’ does not transform the claims into being directed to a law of nature.” The Court thus agreed with the previous analysis of the Colorado court of the swing patent in Quality Innovative Products and concluded that the ‘643 patent claims are adapted to transmit force to the central portion and “thus involve force but are not directed to force itself.”
In contrast to other multiple cases discussed by the Court, “the ‘643 patent claims are directed to a tug toy with specific structural components, which when read in the context of the specification are explained as an improvement over previous animal tug toys. The claims thus satisfy the requirements of Section 101.”
Step Two: The Court then explained that as the ‘643 patent claims were not directed to a judicial exception, “the Court need not determine whether the additional elements transform the nature of the claim into a patent-eligible application under step two of the Alice inquiry.”
Thus, based on this and other decisions cited by the Court, applying a natural phenomenon to/in the operation of an article of manufacture having specific structural elements, rather than simply claiming the phenomenon itself, may satisfy inquiries under Section 101.
FYF-JB, LLC v. Pet Factory, Inc., No. 19cv02608 (N.D.Ill. Sept. 24, 2019);
 Alice Corp. Pty. Ltd. v. CLS Bank Intl., 573 U.S. 208, 216 (2014).
 Quality Innovative Products, LLC v. Brand 44, LLC, 2018 WL 4829647, at *5-7 (D. Colo. 2018) (while the swing patents involved the natural phenomenon of a pendulum, the claims were directed to articles of manufacture used to improve upon the use of traditional swings).