by Dennis Crouch
Exergen Corp. v. Kaz USA (Fed. Cir. 2018)
Following trial, a jury sided with the patentee Exergen – finding the asserted body thermometer claims infringed and not-invalid. Post trial, the District Court confirmed the judgment and denied Kaz’s motion for invalidity under Section 101. On appeal, a divided Federal Circuit has affirmed-in-part — with Judges Moore and Bryson siding with the patentee (valid under 101) and Judge Hughes arguing invalidity. Although nonprecedential, the decision offers a key explanation for when medical diagnostic methods can be patent eligible and highlights a major split between members of the Court. I would recommend that you read both the majority and dissenting opinions.
Claim 14 of U.S. Patent No. 6,292,685 is probably the most – borderline claim at issue. Below, I have listed claim 14 against Claims 54/55 of Exergen’s U.S. Patent No. 7,787,938, whose invalidity was previously affirmed by the Federal Circuit (judgment without opinion).
| Claim 14 of ‘685 Patent – VALID
14. A method of detecting human body temperature comprising making at least three radiation readings per second while moving a radiation detector to scan across a region of skin over an artery to electronically determine a body temperature approximation, distinct from skin surface temperature.
|
Claims 54/55 of the ‘938 Patent — INVALID
54. A method of detecting human body temperature comprising: measuring radiation as target skin surface of the forehead is viewed, and 55. The method of claim 54 wherein the region of the skin is over an artery. |
According to the Federal Circuit, the claims “employ a natural law to achieve their purpose.” The dispute in the case related to Alice/Mayo step-two — whether the claims include an inventive concept beyond the temperature calculations “sufficient to transform the claims into a patent-eligible application.” The difference here is that the valid claims include the additional technique of “scanning while moving a radiation detector.” Now, it turned that the approach was found in the prior art — i.e., was “well understood,” but not in a clear enough form to be “routine and conventional.” Judge Moore has previously explained that the question of whether aspects of a claim are “well understood, routine, and conventional to a skilled artisan in the relevant field” is a question of fact. Here, that meant that the district court decision was not disturbed.
More to come on this one.
As you read the opinions here, you’ll see that these are good candidates for being precedential. FedCir R.32.1(e) provides a mechanism to request to make an opinion precedential – open to any person within 60 days of opinion.
Not sure why this still needs to be freed…
Your comment is awaiting moderation.
March 10, 2018 at 6:20 pm
Getting closer: that Big Box of Protons, Neutrons, and Electrons:
link to forbes.com
The opinion can’t be re-designated precedential unless the panel agrees to this unanimously, and I doubt that will happen here given the dissent.
When is someone “important” going to acknowledge that current 101 jurisprudence is nothing more than a non-rigorous obviousness inquiry?
It’s getting ridiculous.
“well understood, routine, and conventional to a skilled artisan in the relevant field” Really?
Alas, Judge Rich has passed on and no one has the cajones to call out the Supreme Court for their overstepping of the Separation of Powers…
FB. There are plenty of people that say this. The money (Google) is pushing not caring.
You have to realize that 5 of the current judges were selected by Google. They almost assuredly had a telephone call where they pledged to burn the patent system down in exchange for their appointment. That kind of pledge weighs on a person’s mind and eventually destroys their intellectual integrity, which what we see at the CAFC.
You are missing half the analysis.
When are people going to realize that all the sections are related because of the fundamental policy considerations behind all of them?
Also: “obviousness” has been doing the eligibility work for a while and lo and behold there wasn’t nearly as much complaining then.
That’s not part of the analysis.
That’s not part of any analysis.
That’s obfuscation instead of clarity.
That’s not part of the analysis
I didn’t say it was.
Looking at the prior art is half the analysis. The other half is looking at what elements in the claim are eligible and which are ineligible (e.g., abstract). If the eligible part is obvious, then you’ve got trouble.
Think about a kit claim where the functional components of the kit are obvious but you’ve also recited an element comprising a booklet (a manufacture) comprising non-obvious instructions.
That’s an ineligible claim.
This is basic kindergarten level stuff and if you can’t handle it or you can’t follow you then you have no business getting anywhere near a patent and you are probably committing malpractice.
[shrugs]
What is basic kindergarten stuff is that perfectly eligible (and perfectly patentable – let’s hope you understand the difference) may at their individual level have elements that be Each and Every One:
– Not eligible
– Not patentable
– any mixture or combination thereof.
You can keep on [shrugging] all you want, but until your view reflects those plain facts, all that you are doing is blowing (foul and fetid) wind.
LOL
perfectly eligible … may at their individual level have elements that be Each and Every One:– Not eligible
– Not patentable
Thanks, Billy, you insufferable shertbag. But that’s not the issue we’re discussing.
And if you can’t see that, then you lack the intelligence to have the discussion.
Please go back to Big Jeans place and continue massaging his c ro tch for him. It’s what you do best.
“. But that’s not the issue we’re discussing.”
Who is Billy and why are you dissembling about what I was talking about? My point is directly on target to what you were “discussing” (more like, what you were attempting to dissemble about).
“Big Jeans place and continue massaging his c ro tch for him. It’s what you do best.”
Your mind and your comments show your own 0bsess10n.
Ever notice that you are the only one that keeps on bringing up Quinn, and that your references are always tinged with your unrequited “passion.”…?
Just curious. If the prior art was actually that close, why was there not a post-trial motion for judgment based on 103 that could be appealed from, not just on 101? [Arguing that no reasonable juror could have found the subject claims 103 valid.] Was that defense waived in the trial?
This is a good point Paul. And really the current 101 is a 103 argument as you suggest.
I really like this case’s reasoning, and hope it is made precedential.
Looks like the correct result to me. The result for the other patent was clearly erroneous: claim 54 doesn’t recite something abstract and shouldn’t be held ineligible under 101. (That “something more” analysis is pure b.s., conflating 101 with 102 and 103, and has no place in a rational analysis of patent eligibility.) Claim 54 is, however, anticipated by what parents have been doing since time immemorial, viz. putting their hands on their kids’ foreheads to determine whether or not those kids have a fever. But as I just said, that has no place in 101 analysis. Despite what the ignoramuses of SCOTUS say.
The rather odd “don’t have a dialogue” filter has produced some rather choppy results on this thread.
It appears that Malcolm’s limit for this thread was 9 comments. So after that limit, his additional 7 comments were held for moderation (while dialogue continued).
This morning, those 7 comments drop – sometimes directly in the middle of an ensuing dialogue.
Similarly, who knows when – or if- comments to join the dialogue from those even more constrained will drop….
Maybe the college boys and girls down at the local coffee shop could use a pizza this weekend and come up with some better programming….
It seems to me that this is all based on Dennis looking at comments and deciding whether to admit or delete them. And sometimes he is too busy to look at them.
That plus there seems to be a limit to the number of comments. I don’t see why MM’s comments continue to be admitted when his conduct is by far the worst.
There has definitely been a “count” filter installed.
It remains though that that “editorial control” feature is not applied in any meaningfully objective or rational basis.
Comments are “cherry picked” as to what is published – on top of the fact that certain posters, known to be a blight, with their blight documented to have been occurring in more or less the same manner now into its 13th year receive preferential treatment.
I agree that MM gets preferential treatment. But, then we have said this for 13 years anon.
One day we must have a beer together.
So, we have a disputed issue of fact resolved by the district court where the majority accepts as binding and dissent believes is clearly erroneous. This is not an issue that needs to be resolved in a precedential decision or en banc.
The infringer specifically waived its right to a jury trial below but now wants the federal circuit to overturn the district court’s finding of facts in favor of the patent owner because they were denied their right to a jury trial? Amazing.
Ned, I do believe that the eligibility of the subject matter of a patent, like claim construction, is always a matter of law. Even as a mixed question, the underlying facts in this case don’t likely actually turn the determination of how to apply the law (or the exceptions to the law) to the invention.
Martin, but the question of whether the otherwise patentable technology is new or improved is a question of fact unless it is simply conceded or admitted by the patent owner. What is not a question of fact is whether something is otherwise patentable technology: laws of nature, math, that kind of stuff.
What a mess of terms being used entirely improperly.
It is witch trial talk.
The infringer specifically waived its right to a jury trial below but now wants the federal circuit to overturn the district court’s finding of facts
Right … because clearly erroneous. Happens all the time.
By the way, which facts are you referring to exactly, Ned?
“Now, it turned that the approach was found in the prior art — i.e., was “well understood,” but not in a clear enough form to be “routine and conventional.”
ROTFLMO
Talk about totally missing the point of Mayo. For Moore’s next trick she’s going to slice a distinction between “routine” and “conventional.”
But nothing “activist” about this. Nope. And it’s crystal clear too unlike super difficult concepts such as “abstract” which are totally confounding. LOL.
Reminder: the Supremes in Mayo dealt with the issue of “conventional” detection tech only because … the tech was admittedly conventional.
They weren’t asked about the eligibility of a “think about this correlation” step that was preceded by an known or obvious data gathering method that wasn’t “conventional” (e.g., because the method was freshly disclosed in the prior art and or simply wasn’t popular because it was too expensive or something else unrelated to its functionality).
Logic dictates the result (ineligibility) for these types of claims. It’s the same logic that made the result in Mayo inevitable. You can’t tie up public domain subject matter (old or obvious) by scrivening ineligible subject matter over it.
“Take three measurements in three seconds” is ineligible subject matter. It’s not technology. There is no “there” there.
Just like “I claim a method, wherein said method is carried out on a plane for at least 3.9 seconds during a full moon.”
That’s just gar bage. Pretending that there needs to be some “factual determination” made by a judge or jury before chucking this claim under all of the claims agent statutes is just another example of the maximalists willingness to defend literally everything if it can jack up the value of the worst junknout there.
Define “technology” in non-circular terms and then show me in the law as written by Congress where there is a “technological arts” requirement.
Your comment is awaiting moderation.in response to 12.1
March 10, 2018 at 11:50 am
The Ends do not justify the Means.
As has been explained to you, most nearly ALL of my comments are not geared to your twisted spin of “defend that claim,” but are instead geared to the larger and more important concepts of the law itself.
Your screed is simply off point.
At least four very off “points” in this rant of yours Malcolm.
They don’t get better when you group them like this.
News flash: people routinely infer body temp from detection of radiation through skin over an artery, making an untold number of measurements each second.
This claim adds the words “detector” and “electricity”. That ain’t going to cut it.
I’d like the defenders of this incredibly junk why it matters so much to them whether it’s yanked under 101, 102, 103, or 112.
What’s the angle exactly other than trying to pump up the value of the worst junk out there? (Rhetorical question)
“What’s the angle exactly other than trying to pump up the value of the worst junk out there? (Rhetorical question)”
So you don’t want an answer?
Is there another answer that is distinct from the one I alluded to?
Before you answer that consider the motivations of the free-riders who seek rent by tying up prior art tech with obvious and/or non-tech and/or ineligible and/or content related and/or contextual “limitations”.
It’s a question of scrivening (which I excel at, by the way) versus describing an eligible invention in objective physical terms/steps distinguish the invention from the prior art. What exactly are we trying to promote with garbage claims like this?
“It’s a question of scrivening (which I excel at, by the way)”
What you excel at is blight.
“versus describing an eligible invention in objective physical terms/steps distinguish the invention from the prior art.”
Yet again you seek to place an optional claim format as somehow not optional.
Is that your feeling about what makes you such an excellent scriviner?
Your legend-in-your-own-mind status just does not translate to the real world.
What exactly is the natural phenomenon here? “Heat” is a natural phenomenon. “Temperature” using man-made units is a man-made constrict by definition. Just because man has been measuring temperature for a long time doesn’t make it any more of a natural phenomenon than it ever was. It may be obvious and, if so, then 103 is your only tool. You cannot shoehorn an obvious man-made constrict into the box of natural phenomenon however hard you try.
Anon, your comment reminds me of Adm. Nelson who placed his telescope to is blind eye rather than see a command signal he did not wish to obey.
…sort of like you Ned and the Act of 1952.
Answers always clash with his script.
MM, what if:
The inventive insight is that the superficial temporal artery temperature is the core temperature. Patentability is predicated on the devising of the equation linking forehead temperature to that of the superficial temporal artery that lies immediately below the forehead skin.
Known methods of finding out the body’s “core” temperature are slow. Scanning the forehead temperature is quicker and easier, for example, in an accident or civil emergency. And from the sensed peak forehead temperature, using the novel equation, you can instantly display what is medically important, namely, the body’s core temperature.
No wonder there are so many “infringers”. It’s a valuable and useful contribution to human health. If it’s claimed right, of course.
I suppose the 2:1 split is to tee this eligibility testpiece up for further review, on appeal.
Max, I recently had an operation. The O.R. nurses were trying to find a vein to insert something in the me during the procedure. They were using a new machine that apparently scanned for the vein and reported back its location. Didn’t work on me for some reason. They ended up using the old-fashioned method: skill.
Your point escapes me Ned. Sorry. Of course, forehead T max will sometimes be aberrant, and not indicative of core body temp. But the doc will cope with that, I’m sure.
If you find my contribution above unconvincing, tell me why, in terms I can appreciate. If you like, write is as you would write it in a reasoned decision.
Glad you came through surgery OK though.
Facts about pre-existing natural phenomena aren’t “inventive insights”.
For good reasons.
“Facts about pre-existing natural phenomena aren’t “inventive insights”.
For good reasons.”
When you parse what people say and take that out of context, you create a pretty strawman.
The claim is not “directed to” a fact by itself.
When you take a fact and apply that fact to do something (aka, an application of, or engineering with), then you are in the ballpark of talking about the actual claim and what that actual claim is “directed to.”
Maybe if you tried to engage in an inte11ectually honest manner instead of your usual dissembling, this would need not be pointed out to you.
The claim is not “directed to” a fact by itself.
I never suggested otherwise.
When you parse what people say and take that out of context
I didn’t “parse” anything. MD made a statement. I made a factual observation about that statement, in the context of the discussion.
When you take a fact and apply that fact to do something (aka, an application of, or engineering with), then you are in the ballpark of talking about the actual claim
You may be in the ballpark but you may also be striking out. That happens all the time. Ask Mommy to take you to a game sometime, Billy.
When you take a fact and apply that fact to do something
Big difference between
(1) discovering a fact and describing a novel structure using objective structural terms which take that fact into account, or describing a transformative physical process which takes that fact into account
versus
(2) detecting that fact for “X seconds” using prior art tech, and then doing some math on the data you obtain.
If you can’t tell the difference, then you either lack the intelligence to discuss these issues or you are committing malpractice or both.
[shrugs]
In my assessment of eligibility/patentability, I’m handicapped by my imperfect knowledge of the facts.
From time immemorial, one (a parent) assessed body temperature by laying a hand on the forehead (of one’s child). Is it normal, or is it hot? Mere automation of that process is not fit for patenting.
But here, what is claimed is a way quickly to discover “core” temperature from forehead temperature. To me, as a layman, core temp sounds pretty impressive and important, at least for persons suffering from hypothermia.
Is the difference meaningful and significant, between i) body temperature (as measured under the tongue, in the ear, in the armpit or up the bum) and ii) “core” temperature, of the heart?
Or is it spurious, a scam, to get an issued patent on something that does not contribute anything useful to the art?
Who can help me, on that question?
“Or is it spurious, a scam, to get an issued patent on something that does not contribute anything useful to the art?”
Of course, but what does your loaded question have to do with the situation here?
Why my question? To tempt readers here into writing something useful.
Your question, anon, was useful, but only to the extent that it prompted me to have a look at the EPO file of the family member:
link to register.epo.org
where I find that the opposition by Microlife to the issued patent has been dismissed by the OD.
So at least the EPO’s Opposition Division was not persuaded that the alleged contribution to the art was spurious.
“So at least the EPO’s Opposition Division was not persuaded that the alleged contribution to the art was spurious.”
Great.
So my snark at your manner of posting is confirmed that your post was a loaded question and your own EPO did not go the route that you attempted to lead.
You are welcome.
“To tempt readers here into writing something useful.”
In other words, you are back to your old tricks of throwing C R P at the wall to see what sticks…
Max, at least according to the opinion, scanning the forehead at the rate of three scans per second or greater is the eligible invention.
The dissent observes that machines doing just that are commercially available.
Ned, I always suspected that the facts of the case were a bit like those in Diehr. When I read the EPO opposition wrapper, that suspicion was confirmed. The contribution to the art is the combination of the equation and the scan, to get a faster, more convenient and more accurate read out of core body temperature in mountain sport accident victims, or road traffic accidents, where only the forehead is accessible.
Now there are some who consider Diehr to be good law. And others who think the opposite.
And still nobody knows, how to decide eligibility, in marginal cases, in the USA. There hasn’t been much advance since Diehr, has there?
“Now there are some who consider Diehr to be good law. And others who think the opposite.”
What do you mean by “some consider Diehr to NOT be good law?”
Who feels this way and why do they feel this way?
“There hasn’t been much advance since Diehr, has there?”
That is merely reflecting the score board being broken (a larger issue at law than any of the particular cases that have arisen that seek to have that larger issue at law be applied to a specific instance).
Some refuse to consider the ramifications of what is going on at that larger picture.
Some only care whether or not a desired Ends has been met – clench tight the eyes regarding the Means used to get there.
Max, Diehr physically modified a physical molding process to improve a physical process. The claim included a programmed computer, put it was not there simply to calculate numbers. Its output was used real time to determine when to open the mold.
Here, at best, we have an improved machine that combines existing machines with a new calculus and a new way measuring surface temperature of the forehead. But there is a dispute between the majority and the dissent as to whether machine or process was modified in any way other than the improved calculus.
If one allows existing machinery to do existing things to gather data and the only thing different is the calculus which implements a discovered relationship, the patent is on the discovered relationship.
the patent is on the claim as a whole.
Congress was explicit as to who they thought gets to define the invention (and it was not the Court).
“I made a factual observation about that statement, in the context of the discussion. ”
you parsed it – and got it wrong.
At best this claim protects a new functionality of a radiation detector.
Functionalities aren’t eligible for patent protection.
You can’t take old generic detection tech and claim a method of using it to detect what it was designed to detect (eg radiation) unless you are including a new physically transformative step. Otherwise anybody can walk in and stick in bogus non-tech limitations about time “(wherein between 2.1 and 2.8 seconds) or context (“wherein patient is a male of Norwegian descent”).
It’s bizarre that any member of the CAFC would bend over backwards to breathe life into incredibly junky diagnostic methods like this. Of course their healthcare is covered so what do they care? Their rich entitled friends want to get richer with junk patents and that will make their cocktail parties so much more pleasant.
I d I O ts.
“Functionalities aren’t eligible for patent protection.”
That’s an odd slogan.
What is it that you think is eligible for patent protection?
And then answer that question for things outside of the hard goods categories.
Or do you think that there are only hard goods categories?
The new use of an old technique is sufficient? Really?
Next up: using a radiation detector to detect radiation by taking two measurements in less than 2.8 seconds.
At a venue based event.
And hey how about a haptic alert when the 2.8 seconds is up!
Super techno!!
Someday these geniuses will figure out how to detect radiation with a radiation detector … on a plane!! Wherein the data is transmitted over a secure network.
Can you imagine???
MM, in my view, the measurement technique must be new in kind rather than in degree. According to Hughes, off-the shelf equipment used in a manner that is known is all that is required to infringe if one then did the novel calculations. To wit, scanning for hot spots and taking temperatures while doing so, was old and well known. The only thing new here was using this known method on the forehead because that is where a particular artery could be located using the conventional technique.
Where is there any new machine. Where is there invention in any new process? Where?
Just given the facts that all acknowledge, the conclusion drawn by the district court was clearly erroneous.
The only thing new here was using this known method on the forehead
Because nobody ever used a forehead for temp measurements before. Also … no forehead mentioned in the claim.
If this method were so obvious over the prior art why are you tipping at 101 windmills in the first place? 103 should summarily dispose of such obvious claims. Maybe the problem is the claims are unobvious. In either case, 101 is a poor tool for determining obviousness. Not nearly as well made for this task as 103.
Some claims are ineligible and obvious. Some claims recite bogus “limitations” that add nothing eligible to an ineligible claim. 103 jurisprudence has more flaws in it that 101 jurisprudence.
All of these are answers. Your “103 can handle all this 101 stuff” script was decimated years ago. Do I need to write another refresher? Just ask.
“103 jurisprudence has more flaws in it that 101 jurisprudence.”
Those are some interesting feelings.
Noted.
As to:
“Now, it turned that the approach was found in the prior art — i.e., was “well understood,” but not in a clear enough form to be “routine and conventional.”
Two things:
1) “in prior art” may suffice for determinations of novelty and non-obviousness, but are NOT sufficient (on their own) to establish “understood,” let alone “well understood.” (Taking into account the difference induced with “reasonable experimentation).
2) NO amount of “clear enough” bridges the gap to reach the “different in kind rather than different in degree” level that it takes to provide the evidentiary standard for “conventional” or as otherwise known “in widespread and accepted use.”
Let’s keep our eye on the ball as to these factual predicates to precisely track the legal requirements.
“Widespread”?
Lol. No.
Conventional certainly does not mean merely known or even merely possibly obvious.
Pull your head out.