Red Flag Raised: E-Motosport Patent Ineligible Under Section 101

In Integrated Technology Solutions v. iRacing.com Motorsport Simulations, 2022 WL 4356494, (D. Mass. Sept. 20, 2022), plaintiff ITS asserted at least U.S. Patent No. 10,046,231 claim 15 against iRacing. That claim reads:

A system, that is at least partially hardware, comprising:

an identification component configured to identify a change in a temperature of a racing surface in a racing video game;

a determination component configured to determine an impact of the change in the temperature of the racing surface; and

a modification component configured to make an alteration to the racing surface in accordance with the impact of the change in the temperature,

where the alteration influences performance of a vehicle in the racing video game.

The patent described the invention as an "in-game modifier for racetrack videogames whereby evaluations of both simulated environmental conditions and player actions change the performance of the system during game play," where the claimed methods involve "multiple systems comprised of identification components, check components, determination components, and modification components."

iRacing moved to dismiss the complaint, arguing that the asserted claims are directed to ineligible subject matter under Section 101.

Alice Step 1

At step one, iRacing contended that the "basic thrust of the independent claims is the abstract idea of simulating the impact of a racetrack surface on a vehicle's performance" and each of the claimed steps merely enumerate the "generic steps that describe the raw concept of this simulation, not how to perform it." The emphasis is mine because it struck a chord with the court and is the focus of much of the court's discussion.

Assessing the parties' arguments, the court determined that the asserted patent "does not extend beyond an abstract concept where it does not specify how to perform the purported concepts and is overly broad in its attempt to specify numerous variations on the overarching idea." That emphasis is, again, mine. Looking at the above-named components, the court found that the asserted patent "does not place limitations or specifics on how the claimed components will aim to identify, check, determine, and modify the racing area."

The court found further support looking at the specification: "the numerous different methods of performing the process described in the specifications only reinforces the absence of any specific claimed process or specific means or method."

While ITS argued that a human being could not perform the claimed functions in their mind, the court was unconvinced. "Here, the processes to be performed – identifying, checking, determining, and modifying – are all components of ordinary mental processes," and the fact that it has to do with a "racetrack modification is irrelevant."

Finally, while a concept that "improves upon the functioning of the technology, [the asserted claims] may survive dismissal as long as there is clear guidance on how this concept will be performed." Here, again, the court found that the "lack of clear instructions as to how these logical structures and processes are implemented" brings the asserted claims "into the realm of abstract ideas … the [asserted patent] reads like an invitation for someone to create the software that may or may not improve the technology associated with racing simulations."

Accordingly, the asserted patent cannot "avoid abstraction where it provides no clear guidance on how the claims will be performed."

Alice Step 2

ITS argued that its asserted patent was similar to the patent in DDR Holdings, where the Federal Circuit held that the claims "specify how interactions with the Internet are manipulated to yield a desired result …" The court's focus, however, remained the same: "the claims do not recite a specific way to automate the tire remnant and temperature changes sought. Rather, they fail to recite 'additional features' that bring the claims out of abstract ideas into the realm of cognizable programmatic solutions."

The court found, instead, that the asserted patent merely invokes "alterations of virtual worlds and the components therein, and in the setting of a virtual world," none of which are inventions of ITS. And again, the court focused on the issue of how the claim is performed: the claims "fail to claim an ordered combination of claim limitations that transform the abstract idea of modifiable virtual worlds into a particular, practical application of the abstract idea."

Finally, the court found that any further amendment to the complaint would not change the underlying patent at issue and, accordingly, granted the motion to dismiss and denied leave to amend.

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