By Dennis Crouch

Ex parte Gerlitz, APPEAL 2017-002398, 2018 WL 619852 (PTAB Jan. 26, 2018)

GlucoVista’s patent application claims a method of determining glucose concentration in a body (i.e., physical matter) by changing the body’s surface temperature and measuring the change in infrared (IR) radiation emitted at the wavelength associated with Glucose IR emissions.  The concentration is then calculated based upon these measurements.  Claim 1 though is not tied to glucose, but rather a generic method for determining the concentration of a ‘substance.’

In the ex parte appeal, the PTAB has affirmed the examiner’s rejection on eligibility grounds – finding that the claims were directed to the abstract idea of “selecti[ng] data (temperature, radiation) obtained from known and existing technology and then using the data to make a correlation.” Citing Digitech.[1]

Although transformation is not a “litmus test” of eligibility it is still relevant – here the PTAB held that changing a body’s temperature does not count as Diehr-style transformation.[2]

With respect to Alice/Mayo step-two (“something more”), the PTAB found that the improvement offered by the invention “is an improvement in the application of the mathematical relationship in determining substance concentration, which is, itself, an abstract idea.”

The decision would look like a good candidate for a civil action challenge or appeal – except that the PTAB also found the claims obvious. The examiner had also rejected the claims as obvious. However, those rejections were reversed on appeal.  In my mind, that makes this case a good candidate for challenge – either through civil action or appeal. 

[1] Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).

[2] Diamond v. Diehr, 450 U.S. 175 (1981).

= = = = =

1. A method comprising:

decreasing a temperature of a surface of a body from a first temperature to a second temperature less than the first temperature;

thereafter, recovering to the first temperature by increasing the temperature of the surface of the body from the second temperature to the first temperature;

measuring a first amount of infrared radiation absorbed or emitted from the body in a first wavelength band at predetermined time intervals during the recovery increasing the surface of the body from the second temperature to the first temperature, the first wavelength band being a wavelength band or bands in which a substance in the body emits or absorbs infrared radiation;

measuring a second amount of infrared radiation absorbed or emitted from the body in a second wavelength band at predetermined time intervals during the recovery increasing the surface of the body from the second temperature to the first temperature;

measuring a temperature of the surface of the body; measuring an ambient temperature; calculating a normalized ratio parameter based on the first amount, the second amount, the body surface temperature, and the ambient temperature; and

determining a concentration of a substance in the body non-invasively by using a correlation with the normalized ratio parameter.

Anne Schafly Cori v. Eagle Forum and John F. Shafly, 2018 WL 656598 (S.D. Ill. Feb. 1, 2018)

This is an odd case to raise the America Invents Act. It is a continuation of the break between Conservative Eagle Phyllis Schafly (d.2016) and some members of her Eagle Forum (including her daughter Anne Schafly Cori – the break was precipitated by Phyllis Shafly’s support of Donald Trump’s presidential campaign and ouster of dissenters (including the plaintiff) from the Eagle Forum.

The basic setup in this particular case is that the plaintiff (Schafly Cori) alleged breach of fiduciary duty, trademark infringement and unfair competition against the Eagle Forum. The defendants counterclaimed alleging copyright infringement along with trademark infringement, rights of publicity, unfair competition, and challenging the validity of a license to use certain trademarks. Rather than filing in Federal Court, the Plaintiff originally filed in Illinois State Court (Madison County) and the Defendants removed the case to Federal Court.

Not wanting to be in Federal Court, the plaintiff then amended her complaint to only assert state-law claims and asked for remand back to state court. This is where the America Invents Act comes into play. The AIA amended the federal removal statute 28 U.S.C.A. § 1454 to particularly allow for removal of civil actions where “any party asserts a claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” The AIA also expressly removed jurisdiction from state courts – “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” 28 U.S.C. § 1338. Here, I expect that the defendants included the copyright claim primarily to get Federal Jurisdiction.

In its motion decision, the district court recognized the AIA requirement of removal of cases where one party asserts a copyright claim.** However, the district court ended up remanding the case – finding that the “core” of the plaintiff’s case is about ouster and legal control – not the particular materials being used. Based upon that disconnect, the court found the copyright counter claim “immaterial and made solely for the p purpose of obtaining jurisdiction.” Case remanded back to state court.

[ANNE SCHLAFLY CORI DECISION]

Note 1. It is clear that the district court missed some major steps in its analysis, although it might still have reached the correct conclusion. The statute is clear that a copyright infringement counterclaim gets the case federal jurisdiction, and the holding here suggests that there is leeway with that result. I don’t think so. Rather, the court should have determined whether the copyright claim should be properly dismissed and, if so, then remand.

Note2. ** The February 1, 2018 decision discussed here was based upon a request for rehearing. In its original decision, the court had incorrectly stated that “only the complaint may be considered when determining jurisdiction.” That ruling was based upon Holmes Group v. Vornado, 535 U.S. 826 (2002) that was overruled by the AIA statutory changes.

Three months into FY2018, the USPTO has released some budget numbers – noting that spending is currently outpacing revenue. However, the Office has an optimistic outlook and is planning for revenue to catch-up (and spending to slow down).

Several USPTO fees were modified in January 2018. I’ll note here that the America Invents Act (AIA) of 2011 substantially expanded the USPTO’s fee setting authority. However, that authority is set to sunset in September of this year (2018).

The USPTO should have a new director within the next few days. President Trump nominated Irell & Manella partner Andrei Iancu for the position last fall.  A vote is now scheduled on the Senate Floor for late Monday. So far, no Senators have voiced any direct opposition to the nomination.