The Eastern District of Texas Granted a Rule 12(b)(6) Dismissal Because the Asserted Patent Was Directed to the Patent-Ineligible Abstract Idea of Credentialing Visitors and Checking Them In and Out of an Access-Controlled Environment

May 5, 2021

Reading Time : 3 min

Plaintiff Repifi Vendor Logistics, Inc. sued IntelliCentrics, Inc. for infringing U.S. Patent No. 10,304,268 (“the ’268 Patent”). The ’268 Patent “is directed to a method for credentialing visitors to an access-controlled environment by an access administrator.” Specifically, the claimed method streamlines the credentialing and check-in/out processes for visitors to access controlled facilities (like health care facilities and office buildings) through a smart phone app that communicates with an electronic badge.

The court analyzed patent eligibility using the U.S. Supreme Court’s two-step Alice framework. First, a court must determine whether the claims are directed to a patent-ineligible concept, such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). If so, the court next considers “whether there are additional elements beyond the patent-ineligible concept that ‘transform the nature of the claim’ into a patent-eligible application.” Id.

Under step one, the court found that the ’268 Patent was directed to an abstract idea. Abstract ideas, which are “products of the mind, mental steps, not capable of being controlled by others,” are unpatentable. Berkheimer v. HP Inc., 890 F.3d 1369, 1375 (Fed. Cir. 2018). In the context of software applications, the balance between patentable concrete ideas and unpatentable abstract ideas typically turns on whether the patent is directed to “an improvement in the functioning of a computer,” which is patentable, or to a method that simply adds “conventional computer components to well-known business practices” or that recites “generalized steps to be performed on a computer using conventional computer activity,” which is unpatentable. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016). The court explained that “[c]redentialing and checking in visitors is a process that long predates the ’268 patent,” and that the patent “clearly delineate[d] a method of accomplishing this longstanding human activity.” In other words, automating a longstanding human activity is an abstract idea.

Next, under step two, the court found that the ’268 Patent does not contain an inventive concept. In Alice, the Supreme Court reasoned that a “patent would need to claim some improvement to how computers carry out a function rather than the mere application of existing computer functions to improve an abstract idea.” Alice, 573 U.S. at 587-88. Under this step, merely making a human process more efficient through conventional technology does not save the patent from being unpatentable. Here, Repifi argued that it supplies an inventive concept through the claimed electronic badge. The two functions of the electronic badge are “(1) its ability to communicate with a smart phone and (2) its ability to change its display in response to the communications from the smart phone.” The court disagreed that the electronic badge was inventive because there were no technological improvements to the electronic badge that enabled it to communicate with a smart phone and change its display. Instead, the patent claims simply recite the use of an electronic badge that is capable of performing those functions. Furthermore, the court explained that the electronic badge referenced is commercially available. In other words, the method claimed in the ’268 Patent merely implemented existing technology (smart phones and electronic badges) to automate a human process. 

The court concluded that the ’268 Patent is directed to an abstract idea, without an inventive concept sufficient to transform it and, therefore, found that it is patent-ineligible under § 101. Accordingly, it granted IntelliCentrics’ motion to dismiss without prejudice.

Practice Tip: When prosecuting computer-implemented patents, patent owners should ensure that the claims recite a technological improvement to the functioning of the computer-based device itself and that the specification describes those improvements.

Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., No. 4:20-CV-448-SDJ (E.D. Tex. Mar. 30, 2021) (Jordan, J.)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.