Diagnostic Method Ineligible; Patent Law Once Again Fails to Promote the Progress of Science

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, [2017-2508] (February 6, 2019), the Federal Circuit affirmed the district court’s holding that claims 6–9 of U.S. Patent 7,267,820 (the “’820 patent”) are invalid under
35 U.S.C. § 101 and dismissing Athena’s complaint under Rule 12(b)(6).

The inventors discovered the association between MuSK autoantibodies
and Myasthenia gravis, and in the ’820 patent disclosed and claimed methods of diagnosing neurological isorders such as MG by detecting autoantibodies that bind to a MuSK epitope.

The Federal Circuit agreed that the claims were directed to a natural law, specifically, the correlation between the presence of naturally-occurring
MuSK autoantibodies in bodily fluid and MuSK related neurological diseases like MG. The Federal Circuit said “This correlation
exists in nature apart from any human action. There can
thus be no dispute that it is an ineligible natural law.”

The Federal Circuit concluded that the claims were directed to a natural law because the claimed advance was only in the discovery of a natural law, and that the additional recited steps only apply conventional techniques to detect that natural law. This finding was bolstered by the truthful but unfortunate statements in the specification that “[t]he actual steps of detecting autoantibodies in a sample of bodily fluids may be performed in accordance with immunological assay techniques known per se in the art.”

The Federal Circuit said: “The claims here are directed to a natural law because they recite only the natural law together with standard techniques
for observing it. That the routine steps are set forth with some specificity is not enough to change that conclusion.”

Finally, the Federal Circuit rejected Athena’s argument that the claims were patentable because they required labeling MuSK with a manmade
substance, finding that the use of a man-made molecule is not decisive if it amounts to only a routine step in a conventional method for observing a natural law.

At step II of the aptly named Mayo test, the Federal Circuit found that the steps of the claims not drawn to ineligible subject matter, whether viewed individually or as an ordered combination, only required standard
techniques to be applied in a standard way. This was bolstered by the specification’s description of the steps as “conventional techniques.” The Federal Circuit refused to hold that performing standard techniques in a standard way to observe a newly discovered natural law provides an inventive concept.

Posted in 101

A Patent on Games? No Dice.

In In re Marco Guldenaar Holding B.V., [2017-2465](December 28, 2018), the Federal Circuit affirmed the decision of the PTAB affirming the rejection of claims 1–3, 5, 7–14, 16–18, and 23–30 of U.S. Patent Application No. 13/078,196 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter.

The application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to dice games intended to be played in gambling casinos, in
which a participant attempts to achieve a particular winning combination of subsets of the dice.

The Examiner concluded that the claims were directed to the abstract idea of “rules for playing a game,” which fell within the realm of “methods of organizing human activities.” The examiner also
concluded that the claims were unpatentable for obviousness over U.S. Patent No. 4,247,114 over matters old and well known to dice games, applying the printed matter doctrine. The Board affirmed both rejections.

The Federal Circuit found its decision in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), where it found a method of conducting a wagering game using a
deck of playing cards was drawn to an abstract idea, to be “highly instructive.” In the present case, as in In re Smith, the claims were directed to a method of conducting a wagering game, but using dice instead of cards. with the probabilities based on dice rather than on cards.

The Federal Circuit agreed with Applicant/Appellant that the USPTO’s category of unpatentable subject matter “methods of organizing human activities” can be confusing and potentially misused, but where the decision further articulates a more refined characterization of the abstract idea (e.g., “rules for playing games”), there was no error in also observing that the claimed abstract idea is one type of method of organizing human activity.

The Federal Circuit said that abstract ideas, including a set of rules for a game, may be patent-eligible if the claims contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. On appeal, Applicant/Appellant contended that the specifically-claimed dice that have markings on one, two, or three die faces are not conventional and their recitation in the claims amounts to “significantly more” than the abstract idea. The Federal Circuit said that the markings on Appellant’s dice constituted printed matter, as pointed out by the Board, and this court has generally found printed matter to fall outside the scope of §101.

Specifically, the Federal Circuit said that each die’s marking or lack of marking communicates information to participants indicating whether the
player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Accordingly, the recited claim limitations are directed to information. Additionally, the Federal Circuit observed that the printed indicia on each die are not functionally related to the substrate of the dice.

The Federal Circuit also rejected rejected applicant’s argument that the claimed method of playing a dice game cannot be an abstract idea because it recites a physical game with physical steps. The Federal Circuit said that the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.

The Federal Circuit concluded that because the only arguably unconventional aspect of the recited method of playing a dice game is printed matter, which falls outside the scope of § 101, the rejected
claims did not recite an “inventive concept” sufficient to “transform” the claimed subject matter into a patent eligible application of the abstract idea.

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Primers and the Use of Naturally Occurring Position-Specific Signature Nucleotides are Patent Ineligible

In Roche Molecular Systems, Inc., v. Cepheid, [2017-1690] (October 9, 2018), the Federal Circuit affirmed summary judgment of invalidity of claims of U.S. Patent No. 5,643,723 as directed to patent ineligible subject matter.

The ’723 patent is directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis.  The ’723 patent provides two types of claims: (1) composition-of-matter claims for the primers used in the PCR, which could hybridize to the rpoB gene of MTB at a site that includes at least one of the eleven signature nucleotides (“the primer claims”); and (2) process claims for methods for detecting MTB that include amplifying target sequences by PCR and detecting amplification products,
which, if present, indicate the presence of MTB (“the method claims”).

As to the primer claims, the Federal Circuit held that In re BRCA1 foreclosed Roche’s arguments for patentability. There, the Federal Circuit examined the subject matter eligibility of similar primer claims and held that those primers were not distinguishable
from the isolated DNA found patentineligible in Myriad” and thus are not patent-eligible.  Primers necessarily contain the identical sequence of the nucleotide sequence directly opposite to the DNA strand to which they are designed to bind.  The subject matter eligibility inquiry of primer claims hinges on comparing a claimed primer to its corresponding DNA segment on the chromosome—not the whole chromosome.

As to the method claims, the Federal Circuit said that the claims disclose a diagnostic test based on the observation that the presence of the eleven position-specific signature nucleotides of the naturally occurring MTB rpoB gene indicates the presence
of MTB in a biological sample.  The method claims are directed to a relationship between the eleven naturally occurring position-specific signature nucleotides and the
presence of MTB in a sample. In other words, the method claims assert that if an investigator detects a signature nucleotide from a sample, she knows the sample contains MTB. This relationship between the signature nucleotides and MTB is a phenomenon that exists in nature apart from any human action, meaning the method claims are directed to a natural phenomenon, which itself is ineligible for patenting.

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Details Save Claims from Invalidity Under Section 101

In Data Engine Technologies LLC v. Google LLC, [2017-1135] (October 9, 2018), the Federal Circuit affirmed in part, reversed in part, and remanded, entry of judgment on the pleadings holding that the asserted claims of DET’s U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are ineligible under 35 U.S.C. § 101.

The Federal Circuit concluded that with the exception of claim 1 of the ’551 patent, the asserted claims of the ’259, ’545, and ’551 patents are directed to patent-eligible subject matter, finding that these claims claims are not abstract, but rather are directed to a
specific improved method for navigating through complex three-dimensional electronic spreadsheets. The Federal Circuit agreed that the asserted claims of the ’146 patent,
reciting methods for tracking changes to data in spreadsheets, were directed to the abstract idea of collecting, recognizing, and storing changed information.

Regarding the ’259, ’545, and ’551 patents, the Federal Circuit said that the claimed method does not recite the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets. Rather, the claims require a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers.

 

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Doing New and Useful Things Still Isn’t Enough to Meet 35 USC §101

In BSG Tech LLC v. Buyseasons, Inc., [2017-1980](August 15, 2018), the Federal Circuit affirmed the dismissal of an action for infringement of U.S. Patent Nos. 6,035,294, 6,243,699, and 6,195,652, directed to a “self-evolving generic index” for organizing information stored in a database, as being directed to ineligible under 35 USC §101.

The Federal Circuit agreed with the district court that the asserted claims were directed to the abstract idea of considering historical usage information while inputting data.  The claims’ “focus” is guiding database users by presenting summary comparison information to users before they input data.  This is not a method “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of” wide access databases.  It amounts to having users consider previous item descriptions before they describe items to achieve more consistent item descriptions. Whether labeled as a fundamental, long-prevalent practice or a well-established method of organizing activity, this qualifies as an abstract idea.

The Federal Circuit rejected BSG’s arguments for patentability.  First, BSG Tech argued that the claims require a specific database structure, but claims are not saved from abstraction merely because they recite components more specific than a generic computer.  Second, BSG Tech argued that the claims are not directed to an abstract idea because they require users to specifically consider “summary comparison usage
information” rather than any type of historical usage information, but this was not persuasive, because of the broad meaning of “summary comparison.”  Third, BSG Tech insists that its claims focus on a non-abstract improvement in database functionality.  Ultimately the Federal Circuit found that these benefits, however, are not improvements to database functionality.

Having determined that the claims are directed to an abstract idea, the Federal Circuit proceeded on to step 2 of the Alice analysis, where it found that the only alleged unconventional feature of the claims is the requirement that users are guided by
summary comparison usage information or relative historical usage information — which simply restates what had already been determined was an abstract idea.

The Federal Circuit affirmed the district court’s grant of summary judgment that all asserted claims on appeal are ineligible under § 101.

Posted in 101

Federal Circuit Revises Opinion, But Still Holds Subject Matter Unpatentable

IN SAP AMERICA, INC., v. INVESTPIC, LLC, [2017-2081] (August 2, 2018), the Federal Circuit revised its May 15, 2015, Opinion, as a result of InvestPic’s Motion for Rehearing.  The Federal Circuit still affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 6,349,291, on systems and methods for performing certain
statistical analyses of investment information, but provided additional coverage of the Reexamination claims.

 

Posted in 101

Displaying Data is an Even More Abstract Idea Than Patent Eligibility

In Interval Licensing LLC v. AOL, Inc., [2016-2502, 2016-2505, 2016-2506, 2016-2507] (July 20, 2018), the Federal Circuit affirmed the district court’s determination that claims 15-18 were directed to an abstract idea: the presentation of two sets of information, in a nonoverlapping way, on a display screen.

The Federal CIrcuit said that considered as a whole, the claims fail under § 101’s abstract idea exception because they lack any arguable
technical advance over conventional computer and network technology for performing the recited functions of acquiring and displaying information.  The Federal Circuit pointed out that the specification describes the claimed instructions as routine and conventional.

In this case, Interval Licensing contends that the claimed “attention manager” provides a technological improvement to a computer system. The Federal Circuit disagreed, noting that the focus of the claims here is directed to “providing information to a person without interfering with the person’s primary activity,” i.e., the result-centric construction of the claimed “attention manager.”  The Federal Circuit said that standing alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is
an abstract idea, noting the use of a breaking news ticker across the bottom of the screen.  The Federal Circuit said that it has held that information is intangible, and that collecting, analyzing, and
displaying that information, without more, is likewise an abstract idea.  The Federal Circuit said that recitation, as in this case, of the collection, organization, and display of two sets of information on a generic
display device is abstract absent a “specific improvement to the way computers or other technologies operate, remained abstract.

The Federal Circuit also rejected the argument that the claims are not abstract in view of the claimed display instructions, pointing out that the the claimed instructions do not identify how the function is performed.  The Federal Circuit said that acquiring and organizing information, as broadly recited by some of the instructions
limitations, is an abstract idea, not an improvement in how computers and networks carry out their basic functions.

The Federal Circuit also rejected the argument that acquisition of specific information desired by the user represented an inventive concept, noting that offering a user the ability to select information to be displayed is one of the “most basic functions of a computer.”

Having have considered all of Interval Licensing’s arguments and finding them unpersuasive, the Federal Circuit affirmed the determination that 15–18 of the ’652 patent were directed to patent ineligible subject matter.

Posted in 101

Counting Votes is a Abstract Idea, and Simply Automating the Process Doesn’t Make it Patentable


In Voter-Verified, Inc., v. Election Systems & Software LLC, [2017-1930] (April 20, 2018), the Federal Circuit affirmed the district court’s determination that claims of
U.S. Reissue Patent RE 40,449 were directed to patent-ineligible subject matter and are thus invalid under 35 U.S.C. § 101.

The Reissue patent in suit was directed to voting methods and systems that provide for
“auto-verification” of a voter’s ballot.  The parties have previously litigated the validity and infringement of the patent prior to Alice v. CLS Bank, and thus a threshhold issue was whether Alice was a “substantial change” in the law such that issue preclusion does not apply.  The Federal Circuit held that Alice was not a substantial change in the law (noting that it was a mere application of Mayo), but nonetheless concluded that issue preclusion did not apply because §101 invalidity was never “actually litigated” — and in fact was “barely considered,” and in any event the issue of invalidity under §101 was not necessary to the judgment in the first district court action.

Have decided that consideration of §101 was not barred, the Federal Circuit turned to whether the claims of RE 40,449 did in fact claim patentable subject matter.  Election Systems argued that the claims are directed to the abstract idea of “voting and checking
the accuracy of a paper election ballot,” which represents only a well-established human activity. Because the patent only discloses use of general purpose computers, and the invention is essentially automating a fundamental human activity, Election Systems argued that this was insufficient to transform the the claimed abstract idea into
patent-eligible subject matter.

The Federal Circuit agreed that the claims were directed to patent ineligible subject matter.  Even though the claims encompassed both methods and systems, the Federal Circuit found no distinction between them for § 101 purposes, as “they simply recite the same concept.”  The Federal Circuit said that the claims as a whole are drawn to the concept of voting, verifying the vote, and submitting the vote for tabulation, and noted that humans have performed this fundamental activity that forms the basis of our democracy for hundreds of years.  The Federal Circuit concluded that these steps were therefore nothing more than abstract ideas.  The Federal Circuit further found that there was no inventive concept in the claims sufficient to transform them into patent-eligible subject matter. Neither party disputed that the claims recite the use of general purpose computers that carry out the abstract idea, and the case law has consistently held that
use of standard components are not sufficient to transform abstract claims into patent-eligible subject matter.

 

Posted in 101

Hold the Mayo: Specific Method of Treatment for Specific Patients using a Specific Compound at Specific Doses to Achieve a Specific Outcome Is Patent-Eligible Subject matter

In Vanda Pharmaceuticals Inc. v. West-ward Pharmaceuticals International Limited, [2016-2707, 2016-2708] (April 16. 2018), the Federal Circuit affirmed the district court;s determination that claims 1–9, 11–13, and 16 of U.S. Patent 8,586,610 (infringed and not invalid.

The Federal Circuit noted that inducement can be found where there is evidence of active steps taken to encourage direct infringement, which can in turn be found in advertising an infringing use or instructing how to engage in an infringing use.  Thus ican be found where there is evidence of active steps taken to encourage
direct infringement, which can in turn be found in advertising an infringing use or instructing how to engage in an infringing use.  The Federal Circuit rejected West-ward’s argument that the proposed label was insufficient to find inducement, without an underlying direct infringer, because in an ANDA case infringement is statutorily defined as filing or amending the application, not by selling a product.

The Federal Circuit also found that the district court did not clearly err in finding that the proposed label recommends performance of all the claimed steps, finding that potential noninfringing uses do not preclude a finding of specific intent to induce infringement.

Regarding subject matter eligibility, the Federal Circuit rejected West-ward’s argument that the claims were similar to the the claims found patent ineligible in Mayo.  First, the claims in Mayo were not directed to a novel method of treating a disease. Instead, the claims were directed to a diagnostic method based on the relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm.  This relation was a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.  in contrast, the Federal Circuit found the instant claims were directed to “a new way of using an existing drug” that is safer for patients.

Second, the Federal Circuit found that unlike the claim in Mayo, the present claims do not tie up the doctor’s subsequent treatment decision.  The claim in Mayo did not go beyond recognizing  a need to increase or decrease a dose — it could be infringed even if the doctor did not actually change the treatment.  In other words, the claim in Mayo did not involve using the natural relationship. In contrast, the claims in suit recite the steps of carrying out a dosage regimen based on the results of genetic testing.  Thus the claims do not broadly tie up the doctor’s subsequent treatment decisions.

The Federal Circuit analogized the case to CellzDirect, where the claims were not directed to an observation or detection, but to a method of preserving cells. There, the natural ability of the subject matter to undergo the process did not make the claim “directed to” that natural ability. The Federal Circuit also distinguished Myriad, where the court noted that method claims and patents on new applications of knowledge about particular  genes were not implicated by its decision, noting the claims fall squarely  within categories of claims not implicated by its decision.

The Federal Circuit concluded that the claims were directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from Mayo because they recite more than the
a natural relationship; instead, they recite a method of treating patients based on this relationship.

The Federal Circuit affirmed that the district court clearly erred in finding that the  patent sufficiently discloses the claimed invention.

Finally, the Federal Circuit agreed that 35 U.S.C. § 271(e)(4) supports the injunctive relief granted by the district court.

 

 

Posted in 101

Computer Interface Was Not an Abstract Idea

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., [2016-2684, 2017-1922](January 25, 2018), the Federal Circuit affirmed the denial of summary judgment that claims 8 and 9 of U.S. Patent No. 8,713,476 and claims 11 and 13 of U.S. Patent No. 8,434,020 are directed to patent ineligible subject matter under 35 U.S.C. § 101; (2) the denial of JMOL that Blanchard anticipates the asserted claims under 35 U.S.C. § 102; and (3) the denial of JMOL that the claims are not infringed.

The  patents disclose improved display interfaces, particularly for electronic devices with small screens like mobile telephones, which allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices.  Claim 1 was representative of the claims of the ‘476 patent:

1. A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary
that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.

LG moved for summary judgment of invalidity of the asserted claims under 35 U.S.C. § 101, which the court denied, finding that crediting LG’s characterization of the claims as directed to “displaying an application summary window while the application is in an unlaunched state,” the concepts of “application,” “summary window,” and “unlaunched state” are specific to devices like computers and cell phones, and explaining that LG identified no analog to these concepts outside the context of such devices, and further alternatively finding claim 1 patent eligible at least because it passes the machine-or-transformation test.

The Federal Circuit conducted the Alice two-step analysis, noting that at step one it must “articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.  The Federal Circuit pointed out the difficulty inherent in delineating the contours of an abstract idea, and observing that all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” The Federal Circuit also considered whether the claims are directed to a specific improvement in the capabilities of computing devices, or, instead, a process that qualifies as an abstract idea for which computers are invoked merely as a
tool.

The Federal Circuit asserted claims in this case are directed to an improved user interface for computing devices, not to the abstract idea of an index, as argued by LG. Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and
presenting information in electronic devices.   The Federal Circuit disclosed invention improves the efficiency of using the electronic device by bringing together a limited
list of common functions and commonly accessed stored data ,” which can be accessed directly from the main menu. The Federal Circuit found that the this language clearly indicates that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.  Referring to the language of the specification, the Federal Circuit found that it the claims were directed to an improvement in the functioning of computers, particularly those with small screens.

Having determined that the claims were not directed to an abstract idea, the Federal Circuit did not reach the second part of the Alice test.

On the anticipation issue, the Federal Circuit found that LG failed to carry its burden to show the claims anticipated.  On the infringement issue, the Federal Circuit found that because the claim language, specification, and prosecution
history all support the district court’s construction, that this construction was correct. Further, the Federal Circuit found substantial evidence supports the jury’s verdict of infringement based. While LG argued no reasonable
jury could find the accused devices satisfy this claims the Federal Circuit disagreed.

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