Federal Circuit to Decide Validity of ChargePoint Patents

  • Oral arguments were heard last Thursday at the Federal Circuit for a patent dispute between electric vehicle charging station rivals ChargePoint, Inc. and SemaConnect, Inc.
  • The Federal Circuit is reviewing an earlier decision by a federal court in Maryland that found four ChargePoint patents to be invalid for claiming inventions that are not eligible for patent protection.

The United States Court of Appeals for the Federal Circuit is poised to decide the validity of four key ChargePoint, Inc., patents after hearing oral arguments last Thursday. The patents at issue are directed to a networked electric vehicle charging station (EVCS) and were previously held invalid by a federal court in Maryland for claiming inventions that are ineligible for patent protection. ChargePoint appealed that holding to the Federal Circuit.

The case began in December 2017, when ChargePoint sued rival EVCS provider SemaConnect, Inc., for alleged infringement of the four ChargePoint patents. ChargePoint sought a restraining order from the Maryland court to prevent SemaConnect from installing some $16 million of ECVS’s purchased by Electrify America, the Volkswagen subsidiary that has pledged to spend $2 billion on EV infrastructure as part of the settlement agreement for Volkswagen’s diesel emissions scandal. Instead of ordering SemaConnect to delay installation of the EVCS’s, the Maryland court held ChargePoint’s patents to be invalid and dismissed the case altogether.

On appeal, ChargePoint sought to convince a panel of three appellate judges at the Federal Circuit that the claimed inventions are eligible to be patented. At issue is a rule of patent law that bars the patenting of “abstract ideas.” The Maryland court had found the claimed inventions to be no more than the abstract idea of remotely controlling an EVCS by connecting it to a network.

At arguments last Thursday, ChargePoint asserted that the claimed inventions could not be mere abstract ideas because they include tangible hardware elements such as a controller, a transceiver, and even a “current measuring device.” ChargePoint also sought to use several of SemaConnect’s previous statements about these hardware elements as evidence that SemaConnect has previously acknowledged that the claimed inventions were not abstract ideas. SemaConnect countered by noting that the recited hardware elements were each just a generic component (i.e. “a transceiver for communicating”), such that the claimed invention could be reduced to its essence: remotely controlling a charging station, which is an abstract idea.

The Federal Circuit will likely either affirm or reverse the Maryland court’s holding that the four ChargePoint patents are invalid. However, the Federal Circuit could also find that the Maryland court’s decision on validity was premature, and elect to send the case back to the Maryland court for further fact development. A decision is expected in the next few months.

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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