When mounting a Section 101 challenge, it is tempting to reduce the claimed invention to the broadest abstract concept possible (for example, "communications" or "data transfer"). The Federal Circuit has not given defendants much incentive to be more selective or specific in that regard. However, there are limits, and the defendants in APS Techs. v. Vertex Downhole, Inc., C.A. No. 19-1166-MN found them.
In a July 29, 2020 order Judge Noreika denied defendants' motion to dismiss because defendants' Section 101 challenge "oversimplified the claim to an improper level of abstraction." Defendants asserted that the claims were directed - at their heart - to "data transmission." Although Judge Noreika expressed some concern regarding the claims' functional language, and permitted defendants to re-mount their challenge later in the case, she declined to conclude that the claim was directed to an abstract idea "instead of some improvement in a specific mud telemetry and drilling process."
Whether defendants might have prevailed with a narrower or more specific characterization of the alleged abstract idea at the heart of the claims is anyone's guess, but this ruling demonstrates the care that should be taken in choosing how to present step 1 of the Section 101 argument, particularly where the claims have a connection to a tangible technology (in this case, drilling rigs used in oil fields).
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