In Illumina, Inc. v. Ariosa Diagnostics, Inc., [2019-1419] (August 3, 2020), the Federal Circuit modified the Court’s original opinion on March 17, 2020. The Federal Circuit reversed the district court’s determination that claims 1–2, 4–5, and 9–10 of U.S. Patent 9,580,751 and claims 1–2 and 10–14 of U.S. Patent 9,738,931 were invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.
In XY, LLC v. Trans Ova Genetics, LC, [2019-1789] (July 31, 2020), the Federal Circuit reversed the district court’s judgment that the asserted claims of RE46559 are ineligible under §101, and vacate the district court’s determination that claim-preclusion judgment, and remand for further proceedings certain claims of U.S. Patent Nos. 6,732,422, 7,723,116, and 8,652,769 were claim-precluded based on a prior lawsuit filed by XY against Trans Ova.
The ‘559 patent is directed to a method of operating a flow cytometry apparatus with at least n detectors to analyze at least two populations of particles in the same sample. At Alice step two the district court found that the claims were directed to the mathematical equation that permits rotating multi-dimensional data. At Alice step two, the district court held that the asserted claims lacked an inventive concept because XY admitted that each claim element was known in the art.
Beginning its analysis with Alice step one, the Federal Circuit concluded that the district court erred when it held that the claims are directed to the mathematical equation that permits rotating multi-dimensional data. The Federal Circuit found that the claims are directed to a purportedly improved method of operating a flow cytometry apparatus. The Federal Circuit found the asserted ’559 patent claims were analogous to the claims at issue in Diehr and Thales. Like the claims in Diehr, the asserted claims “describe in detail a step-by-step method” for accomplishing a physical process. Like the claims in Thales, the claims are directed to a method in which at least two sensors or detectors gather data about an object before mathematical operations are applied to the gathered data to generate more accurate information about the object than was previously possible in the art. Having concluded that the asserted claims of the ’559 patent are not directed to an abstract idea at Alice step one, the Federal Circuit did not reach Alice step two.
Turning to the issue of claim preclusion, the Federal Circuit said that the parties’ only dispute concerned whether the district court properly concluded that XY’s 2012 and 2016 lawsuits present the same cause of action. XY argues that the district court erred by failing to compare the currently asserted patent claims to the previously asserted patent claims to determine whether the causes of action in the two lawsuits are essentially the same, and the Federal Circuit agreed. The district court’s holding was based solely on the fact that the earlier-asserted patents and the later-asserted patents shared a common specification and were continuations of, and terminally-disclaimed to, the same parent patent. The Federal Circuit concluded that the district court erred in its claim-preclusion analysis by failing to compare the scope of the patent claims asserted in the 2012 lawsuit with the scope of the patent claims asserted in the 2016 lawsuit, and vacated and remanded the case.
In American Axle & Manufacturing, Inc., v. Neapco Holdings LLC, [2018-1763] (July 31, 2020), the Federal Circuit modified and reissued its October 3, 2019 opinion. In American Axle & Manufacturing, Inc., v. Neapco Holdings LLC, [2018-1763] (July 31, 2020). On petition for rehearing en banc, the Federal Circuit denied rehearing en banc. DYK, wrote a concurrence, joined by WALLACH and TARANTO. CHEN, also wrote a concurrence, joined by WALLACH. NEWMAN wrote a dissent, joined by MOORE, O’MALLEY, REYNA, and STOLL. STOLL wrote a dissent, joined by NEWMAN, MOORE, O’MALLEY, and REYNA. O’MALLEY wrote a dissent joined by NEWMAN, MOORE, and STOLL. LOURIE, dissented without opinion.
In Uniloc USA, Inc. v. LG Electronics USA, Inc., [2019-1835] (April 20, 2020), the Federal Circuit reversed and remanded the district court’s 12(b)(6) dismissal of Uniloc’s patent infringement suit on the grounds that the claims of U.S. Patent No. 6,993,049 were directed to unpatentable subject matter.
The ’049 patent is directed to a communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or key-board). In conventional systems, such as bluetooth networks, two devices that share a common communication channel form ad hoc networks known as “piconets.” Joining a piconet requires the completion of two sets of procedures, namely an “inquiry” procedure and a “page” procedure. The inquiry procedure allows a primary station to identify secondary stations and it allows secondary stations to issue a request to join the piconet. The page procedure in turn allows a primary station to invite secondary stations to join the piconet. Together, it can take several tens of seconds to complete the inquiry and page procedures so that a device joins a piconet and is able to transfer user input to the primary station. Once a piconet is formed, the primary station “polls” secondary stations to determine whether they have data to share over the communication channel.
Because many secondary stations are battery-operated, secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power. A secondary station in parked mode remains synchronized with the primary station, but it must be polled before it can leave park mode and actively communicate with the primary station. In conventional systems, primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit. Therefore, under the conventional polling process, a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.
The district court held that the asserted claims are directed to the abstract idea of “additional polling in a wireless communication system,” analogizing the asserted claims to ineligible data manipulation claims in Two-Way Media Ltd. v. Comcast Cable Communications and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.
The Federal Circuit noted that In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool, and observed that it has routinely held software claims patent eligible under Alice step one when they are directed to improvements to the functionality of a computer or network platform itself. The Federal Circuit held that in accordance with its precedent such as DDR Holdings, Enfish, Visual Memory, and Ancora Technologies, and Data Engine, that the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems. The Federal Circuit said that the claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages. Therefore, like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to “overcome a problem specifically arising in the realm of computer networks.”
The Federal Circuit rejected appellee’s argument that the claims weren’t sufficiently directed to the improvement, The Federal Circuit said that the claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, the Federal Circuit said, they are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station, and this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.
The Federal Circuit said that the claimed invention’s compatibility with conventional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components. The Federal Circuit said that to hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents.
In In re Rudy, [2019-2301] (April 24, 2020), the Federal Circuit affirmed the PTAB decision that claims of U.S. patent application Serial No. 07/425,360 entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods,” were directed to subject matter ineligible for patenting under 35 U.S.C. § 101. As claimed, the user observes the clarity of water to determine whether the water is “clear, stained, or muddy,” measures light transmittance at a depth in the water where a fishing hook is to be placed, and selects a colored or colorless fishing hook based on the clarity and light transmittance of the water, in accordance with a chart.
Mr. Rudy originally filed the ’360 application on October 21, 1989, and it has undergone a lengthy prosecution, including numerous amendments and petitions, four Board appeals, and a previous trip to the Federal Circuit.
The Board’s reasoning and conclusion were fully in accord with the relevant caselaw. Applying the Supreme Court’s two-step Alice/Mayo framework, The Federal Circuit concluded, as the Board did, that the claim is directed to the abstract idea of selecting a fishing hook based on observed water conditions. The Federal Circuit said that the claims require nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions.
Mr. Rudy’s argument that fishing was a practical technological field was irrelevant to the fact that the claims at issue were ineligible. While Mr. Rudy further argued that determining the light transmittance with the accuracy could not be done mentally, the Federal Circuit found that the plain language of the claims encompasses mental determination. The Federal Circuit also rejected Mr. Rudy’s attempt to invoke the machine or transformation test, finding that the claims do not actually recite or require the purported transformation that Mr. Rudy relies upon.
Turning to step two of the Alice/Mayo inquiry, the Federal Circuit said the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the color of the hook to be used) are each themselves abstract, being mental processes akin to data collection or analysis. Considered as an ordered combination, these three steps merely repeat the abstract idea of selecting a fishing hook based on observed water conditions. The Federal Circuit said that the transformation of an abstract idea into a patent-eligible claim requires more than simply stating the abstract idea while adding the words “apply it.”
The Federal Circuit concluded that the claims were directed to ineligible subject matter.
In Cardionet, LLC v. Infobionic, Inc., [2019-1149] (April 17, 2020), the Federal Circuit reversed the dismissal of CardioNet’s complaint for infringement of U.S. Patent No. 7,941,207 on the ground that it claims ineligible under 35 U.S.C. § 101.
At step one of the Alice/Mayo inquiry, the district court concluded that the claims are directed to the abstract idea that atrial fibrillation and atrial flutter can be distinguished by focusing on the variability of the irregular heartbeat. The district court concluded that although the idea of using a machine to monitor and analyze heart beat variability and interfering beats so as to alert the user of potential atrial fibrillation or atrial flutter events may well improve the field of cardiac telemetry, CardioNet did not identify improvements to any particular computerized technology.
The Federal Circuit began its analysis with Alice step one, and looked to whether the claims focused on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. The Federal Circuit concluded that the asserted claims of the ’207 patent were directed to patent-eligible subject matter, saying that the claims focus on a specific means or method that improves cardiac monitoring technology; they are not directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
The Federal Circuit agreed that the claims of the ’207 patent are akin to claims it had previously determined are directed to technological improvements, including in Visual Memory LLC v. NVIDIA, in McRO,.
The Federal Circuit said that at the heart of the district court’s erroneous step one analysis is the incorrect assumption that the claims are directed to automating known techniques.
Because it concluded under Alice step one that the asserted claims of the ’207 patent are not directed to an abstract idea, we do not reach Alice step two.
In Bozeman Financial LLC v. Federal Reserve Bank, [2019-1018, 2019-1020] (April 10, 2020). the Federal Circuit affirmed the PTAB’s decision in a CBM that Banks are “persons” who may petition for post-issuance review under the AIA, and that claims 21–24 of U.S. Patent No. 6,754,640 and 1–20 of U.S. Patent No. are ineligible under § 101.
On the issued of standing to bring a CBM, the Federal Circuit held that the Banks are “persons” under the AIA and the Board had authority to resolve the issues raised in their petitions. The Federal Circuit distinguished Return Mail, where the Supreme Court held that federal agencies are not “persons” able to seek post-issuance review of a patent under the AIA. The Federal Circuit said that the Supreme Court held that the government was not a “person,” such that it was capable of petitioning for any of the three post-issuance proceedings before the USPTO—inter partes review, post-grant review, and CBM review. However the Federal Circuit agreed with the banks that they are distinct from the government for purposes of the AIA, such that they are “persons” capable of bringing petitions for post-issuance review under the AIA.
Bozeman argued that the Banks were merely part of the government, but the Federal Circuit agreed with the Banks that they are corporations that are not government-owned and are operationally distinct from the federal government.
On the issue of eligibility, the Federal Circuit agreed with the Board that the ‘640 patent, which claim a computer implemented method for detecting fraud in financial transactions during a payment clearing process, are directed to the abstract idea of “collecting, displaying, and analyzing information to reconcile check information against a ledger. The Federal Circuit further agreed that the claims do not contain an inventive concept to render them eligible under § 101. Similarly, the Federal Circuit agreed with the Board that the claims of the ‘840 patent are directed to the abstract idea of “collecting and analyzing information for financial transaction fraud or error detection.” The Federal Circuit further agreed that It found that the claims recite generic computer technology and that the claim elements considered individually and as an ordered combination merely “apply the abstract concept of collecting, storing, analyzing, and communicating information to reconcile financial information.”
In Illumina, Inc., v. Ariosa Diagnostics, Inc., [2019-1419] (March 17, 2020) the Federal Circuit reversed the district court’s determination that claims of U.S. Patent Nos. 9,580,751 and 9,738,931 were invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.
Illumina’s related U.S. Patent 6,258,540, which claimed a method for detecting the small fraction of paternally inherited cell-free fetal DNA in the plasma and serum of a pregnant woman, were famously held invalid under 35 U.S.C. § 101 back in 2015 because they were directed to “matter that is naturally occurring”—i.e., the natural phenomenon that cell-free fetal DNA exists in maternal blood. The ‘751 and ‘931 patents presently at issue were based upon the “surprising” discovery that the majority of the circulatory extracellular fetal DNA has a relatively small size of approximately 500 base pairs or less, which meant that fetal DNA could be amplified by separating extracellular DNA fragments which are smaller than approximately 500 base pairs.
The Federal Circuit noted that this was not a diagnostic invention, or a treatment invention, but a method of preparation invention, and applied the two step Alice/Mayo test. At Step 1, the Federal Circuit said it was undisputed that the inventors of the ’751 and ’931 patents discovered a natural phenomenon. But at step one of the Alice/Mayo test, “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is ‘directed to.’” After noting the parties difficulty in identifying the natural phenomenon involved, the Federal Circuit identified the natural phenomenon: that cell-free fetal DNA tends to be shorter than cell-free maternal DNA in a mother’s bloodstream. Turning to the crucial question of whether the claims are “directed to” that natural phenomenon, the Federal Circuit concluded that the claims are not directed to that natural phenomenon but rather to a patent-eligible method that utilizes it.
The Federal Circuit explained the claims in this case are directed to methods for pre-paring a fraction of cell-free DNA that is enriched in fetal DNA. The methods include specific process steps—size dis-criminating and selectively removing DNA fragments that are above a specified size threshold—to increase the relative amount of fetal DNA as compared to maternal DNA in the sample. These process steps change the composition of the mixture, resulting in a DNA fraction that is different from the naturally-occurring fraction in the mother’s blood. Thus, the process achieves more than simply observing that fetal DNA is shorter than maternal DNA or detecting the presence of that phenomenon.
Roche insisted that the claims in this case are no more eligible than the claims at issue in Ariosa, but the Federal Circuit disagreed, noting that in Ariosa, the relevant independent claims were directed to a method “for detecting a paternally inherited nucleic acid” or a method “for performing a prenatal diagnosis,” and the only operative steps in the claims were “amplifying” (i.e., making more of) the cell-free fetal DNA and then “detecting [it],” “subjecting [it] . . . to a test,” or “performing nucleic acid analysis on [it] to detect [it].” The claims were ineligible because, like the invalid diagnostic claims at issue in Mayo, Athena, and Cleveland Clinic, they were directed to detecting a natural phenomenon.
This case shows the importance of how the invention is characterized to the 101 analysis
In Customedia Technologies, LLC v. Dish Network Corporation, [2018-2239, 2019-1000] (March 6, 2020), the Federal Circuit affirmed the PTAB’s determination that U.S. Patent Nos. 8,719,090 and 9,053,494 on comprehensive data management and processing systems were ineligible under 35 U.S.C. §101.
The Federal Circuit followed the Supreme Court’s two-step framework for determining patent-eligibility under §101. At Step 1, the Federal Circuit found that the claims at issue here were directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement in the functioning of a computer. The Federal Circuit explained that to be a patent-eligible improvement to computer functionality, it requires the claims to be directed to an improvement in the functionality of the computer or network platform itself. Improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. In sum, software can make non-abstract improvements to computer technology just as hardware improvements can. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself.
At step two, the Federal Circuit agreed with the Board that the elements of the claims, considered individually and as an ordered combination, fail to recite an inventive concept. The Federal Circuit noted that aside from the abstract idea of delivering targeted advertising, the claims recite only generic computer components, including a programmable receiver unit, a storage device, a remote server and a processor. Such generic and functional hardware is insufficient to render eligible claims directed to an abstract idea. The invocation of already-available computers that are not themselves plausibly asserted to be an advance amounts to a recitation of what is well-understood, routine, and conventional.
In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, [2018-1763] (October 3, 2019), the Federal Circuit affirmed summary judgment that the asserted claims of U.S. Patent No. 7,774,911 on a method for manufacturing driveline propeller shafts designed to attenuate vibrations transmitted through a shaft assembly were ineligible under §101.
1. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:
providing a hollow shaft member;
tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and
positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also con-figured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.
Two types of attenuation were involved — resistive attenuation and reactive attenuation. Resistive attenuation of vibration employs something that deforms as vibration energy is transmitted through it absorbing the vibration energy. Reactive attenuation of vibration refers to a mechanism that can oscillate in opposition to the vibration energy to thereby ‘cancel out a portion of the vibration energy.
The analysis of § 101 follows the Supreme Court’s two-step test established in Mayo and Alice, asking first whether the claims are directed to a law of nature, natural phenomenon, or abstract idea, and second whether the claims embody some “inventive concept”—i.e., whether the claims contain “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
The claims are directed to tuning liners—i.e., controlling a mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies. It was known that vibrations could be damped by resistive attenuation and that bending mode vibrations could be damped by reactive attenuation. the selection of frequencies for the liners to damp the vibrations of the propshaft at least in part involves an application of Hooke’s law. The problem, the Federal Circuit found, was that the solution to these desired results is not claimed in the patent.
The elements of the method here that AAM argues take the patent outside the realm of ineligible subject matter i.e., the mechanisms for achieving the desired result—are not actually claimed in the claims. The Federal Circuit noted that “the patent specification recites only a nonexclusive list of variables that can be altered to change the frequencies exhibited by a liner and a solitary example of a tuned liner (though not the process by which that liner was tuned).” “Most significantly,” the Federal Circuit said, the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations.
The Federal Circuit said that this case might well be significantly different, if, for example, specific models were included in the claims. But, the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc trial-and-error process of changing the characteristics of a liner until a desired result is achieved. The Federal Circuit said that this claiming of a natural law runs headlong into the very problem repeatedly identified by the Supreme Court in its cases shaping eligibility analysis.
Citing Parker v. Flook, the Federal Circuit said “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” In contrast, the Federal Circuit noted that in Diamond v. Diehr, the claims recited other steps apparently adding to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.
The Federal Circuit concluded that the claims here simply instruct the reader to tune the liner—a process that, as explained above, merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work. Thus the subject matter of the claims was not patent eligible.
Judge Moore dissented, observing that “[t]he majority opinion parrots the Alice/Mayo two-part test, but reduces it to a single inquiry: If the claims are directed to a law of nature (even if the court cannot articulate the precise law of nature) then the claims are ineligible and all evidence of non-conventionality will be disregarded or just plain ignored.” Judge Moore quoted the majority that “it makes no difference to the section 101 analysis whether the use of liners to attenuate bending mode vibration was known in the prior art,” saying that this disregarded the second part of the Mayo test.
Judge Moore argues that the majority’s concern with the claims at issue had “nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled.” Respectfully, there is a clear and explicit statutory section for enablement, § 112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.”
Judge Moore was also concerned that the natural law two which the claims were supposedly directed, was never identified, saying “Section 101 is monstrous enough, it cannot be that now you need not even identify the precise natural law which the claims are purportedly directed to.”
Judge Moore also took exception to the majority’s rejection of the inventive concepts asserted by the patentee, first as inaccurate (a fact finding made by the majority on appeal and contrary to all the evidence of record) and second as irrelevant. Judge Moore said that “[u]ltimately, the majority says the inventive concept “makes no difference to the section 101 analysis” — a statement she takes to be an outright rejection of the second step of the Alice/Mayo test.
Judge Moore concludes that “[t]he majority’s true concern with these claims is not that they are directed to Hooke’s Law (because this is clearly a much more complex system not limited to varying mass and stiffness), but rather the patentee has not claimed precisely how to tune a liner to dampen both bending and shell mode vibrations.” Thus the issue was really not one of eligibility, but rather one of enablement. She said: “[a] patentee’s failure to enable his invention renders the claims invalid under § 112, it does not, however, render the claims ineligible under § 101.
Judge Moore finishes: “The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.”