by Dennis Crouch
For the past several years, I have been conducting an annual patent law moot court competition at Mizzou. This year – the eighth annual – the case was was captioned as an appeal of a recent dismissal by District Court Judge Indira Talwani in Cardionet, LLC v. Infobionic, Inc., 2018 U.S. Dist. LEXIS 177305, 2018 WL 5017913 (D. Mass October 16, 2018). In her decision, Judge Talwani dismissed the case for failure to state a claim — ruling CardioNet’s heart monitor patent is directed to an abstract idea rather than a patent eligible invention. U.S. Patent Number 7,941,207 (“the ‘207 patent”). The moot court is sponsored by McKool Smith and so the winner receives $1,000.
In the mock appeal, the patentee raises two issues:
- Whether the district court’s opinion should be reversed because the asserted claims are patent eligible; and
- In the alternative, whether the district court’s opinions should be vacated based upon substantial issues of material fact that make a R. 12(b)(6) judgment for failure to state a claim improper.
The patent here covers a device for diagnosing and monitoring heart arrhythmia — particularly atrial fibrillation and atrial flutter. The basic setup uses standard portable-heart-monitor equipment to get ECG signals. With those signals, the patentee measures variability in beat-to-beat timing of the heart and also ventricular-beat timing. Those two measures can be used then to diagnose a-fib while ruling out other arrhythmia. Claim 1:
1. A device, comprising:
a beat detector to identify a beat-to-beat timing of cardiac activity;
a ventricular beat detector to identify ventricular beats in the cardiac activity;
variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats;
relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and
an event generator to generate an event when the variability in the beat-to-beat timing is identified as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector.
3. The device of claim 1, wherein the variability determination logic is to compare times between R-waves in three successive QRS complexes to determine the variability in the beat-to-beat timing.
CardioNet sued InfoBionic for infringement in March 2017. Rather than filing an answer, InfoBionic filed a Motion to Dismiss for “failure to meet the pleading standard of Twombly and Iqbal and for patent ineligibility of the ‘207 patent pursuant to § 101.” While the district court was considering the briefed motion, the Federal Circuit decided Aatrix and Berkheimer but did not permit supplemental briefing regarding material facts at issue in the case. The district court then granted the motion to dismiss with prejudice – finding the claims invalid as directed to an abstract idea. The court explained “the innovation of the … patent may be to use computer equipment and logic to monitor the variability of beats, but nothing in these claims places any limitation on that abstract idea.”
I still struggle with failure-to-state-a-claim motions in this particular situation because it confounds the ordinary approach to procedure in federal civil litigation. Namely, in ordinary litigation, the complaint does not need to anticipate defenses (such as invalidity) and plead facts to get around those defenses. Rather, the complaint is where the patentee makes its prima facie case of infringement. That said, the courts are disagreeing, at least de facto.
Question: How would you argue this appeal?
- Lower Court Decision: CardioNet LLC v InfoBionic Inc
CardioNet has filed its notice of appeal, but briefing is not due in the actual case until January 2019.
link to news.microsoft.com
Abstract?
“Directed to Abstract?
A claim and an invention are two different things. An abstract claim and an abstract invention likewise are two different things, but they are constantly lumped together.
No, you can’t determine if an invention is abstract or not without some reference to prior art, because without some reference to prior art, you can’t identify the art or endeavor pertinent to the invention.
Abstract inventions should be legally defined as depending on an abstraction for utility. An abstraction must be hosted in a human mind.
Abstract claims can fail for 112 and 103 reasons- the abstraction means the claims have not proven the inventor grasped the invention, or they have not provided enough information for PHOSITA to practice the invention, or they have not, in sum, departed enough from the prior art.
Until we have a Markman like process to construe inventions, and a judicial recognition that consumed information is automatically abstract, we are never going to get out of this mess.
“because without some reference to prior art, you can’t identify the art or endeavor pertinent to the invention.”
Pertinent…
…for what purpose?
You are confusing eligibility and patentability.
Martin is correct. You are the one who is “confused” here, Billy. Learn to read.
Lol, Malcolm saying that Martin is correct only reinforces that I am correct.
Thanks for that Malcolm.
Question for the struggling kindergartners out there.
Imagine that I’ve “innovated” … something. And now I want to claim it with a patent claim so I can sue infringers.
If I write a patent claim that begins “An improved airplane, comprising …”, what kind of technology have I necessarily innovated?
a) No kind of technology is necessarily implicated by that preamble
b) Technology related to flight
c) The question is unfair, in Billy’s mind, because it makes a point about a fundamental aspect of patent law that Billy wishes he didn’t have to deal with
d) Both (a) and (c)
The claim is to “a device”. Not abstract. It might be a broad claim, it might be an obvious invention, but literally only covers devices configured as per the claim elements.
The claim is to “a device”. Not abstract.
… and that is not an answer to the simple question you were directly asked.
Try again, please.
In the meantime, let’s work on the accuracy of the answer that you did give. The claim may describe a device, and that device may not be abstract. But as everyone with a brain functioning well above the level of a five year old knows, the mere recital of a “device” can not be enough to confer eligibility upon the claim. Why is that the case? Because the “device” may be in the prior art (e.g., an “airplane”) in which case the device may be merely a context in which ineligible subject matter is claimed (e.g., “wherein the airplane comprises a loudspeaker over which is broadcast instructions for downloading a copyrighted version of ‘Batman VII: Season of the D0rk'”).
See how that works? I guarantee you pretty much everyone does. And they also understand the ramifications of not seeing how it works, which means that you are up shirt creek with a big paddle stuffed in your mouth.
It’s truly p@ thetic that this stuff needs to be explained to you simplet0ns over and over.
“confer eligibility upon the claim. Why is that the case? Because the “device” may be in the prior art”
Conflating patent eligibility and patentability…
…again.
HPB: The claim … literally only covers devices configured as per the claim elements.
Can those “configurations” be non-structural “configurations”, or are such “configurations” prohibited by one of the other statutes that you seem to adore?
Simple question. Yes or no. If “yes”, please show everyone the statute and the language in the statute that expressly prohibits distinguishing prior art devices from claimed devices using only non-structural configurations If “no”, then explain the purpose of 101 when it is plain as paint that anyone can scriven around the “statutory categories” in two seconds and use a patent claim to protect literally any abstraction in any “statutory” prior art context, and also show everyone where Congress discussed making this radical revision to existing patent law.
Thanks. And thanks in advance for failing to respond coherently and proving my point to everybody for the zillionth time. I win. You lose. Loving it.
Non-structural…
Yet again you want to elevate an optional claim format into something not optional.
It is odd that you “demand” of others while displaying such chicanery.
Do you know what “statutory category” even means, Malcolm?
I “get” that you think it fine that the Supreme Court has reached c certain Ends by writing that part of what Congress came up with out of the statute, but you should at least pretend to know what the actual patent law is.
Do you know what “statutory category” even means, Malcolm?
Yes. It means that Giles Rich was a dipshirt and a fraud and the fact that people name legal competitions after him is an embarrassment to the profession.
You have a most decidedly odd sense of profession.
Your cognitive dissonance when it comes to actually providing rights for innovators is well noted.
(as also should be noted that Judge Rich is not the one that created the statutory categories, but why let facts get in the way of your rants? You — at least in your own mind — are “winning” for the zillionth time. So very Trump of you at that.
Once your claim makes it out of the office and into a District Court, there really ought to be a singular procedure and set of customary motions/timing used by all judges to construe the invention, just like what occurs now with the meaning of the words of the claim. Since “airplane” and “improving” are well understood terms, simply construing the words won’t help locate the invention in any particular art or endeavor.
Yes Martin, as also noted several times on this blog and elsewhere, if all District Court judges conducted their Markman claim interpretations near the beginning of a suit instead of delaying them until after discovery and just before trial, it would be a huge cost savings for both parties in many patent suits. Leading to early settlements, S.J.s or reduced discovery.
“if all District Court judges conducted their Markman claim interpretations near the beginning of a suit instead of delaying them until after discovery and just before trial, it would be a huge cost savings for both parties”
Probably a dumb question: why don’t they?
Yes Paul, but Markman procedures should be expanded to cover eligibility, explicitly.
And of course the Kafkaesque nightmare of full blown federal court litigation is totally disproportionate, in many instances, to any possible theory of damages. This cuts against both patantees and defendants. Any procedures that materially shorten litigation are hugely impactful.
To try to answer both Ben and Martin below, most unpatentable subject matter motions based on Alice, Mayo, etc. ARE filed and addressed up front,
As to why many D.C. judges do not conduct Markman hearings to define claim scope up front, the short answer could be because neither the Fed. Cir. or their local rules has said that they have to. A longer answer could be that since about 95% of all patent suits get settled before trial anyway, and they are busy with their criminal case dockets, it behooves them from a time efficiency standpoint to put off getting so involved in a patent suit until they have to. [Chip in if you have a better answer.]
“Once your claim makes it out of the office”
That’s rather the idea of the Quid Pro Quo and turning an innovator’s inchoate right into a full (prior Private personal, now Public Franchise) legal property right.
Rights get enforced in the courts.
That happens to be true of all rights.
That’s how our system was set up.
Would (any) reduction in such costs be impactful? Certainly. Should such drive substantive patent law? Not likely.
“judicial recognition that consumed information is automatically abstract”
You still do not have a handle on the basics of utility.
Martin is talking about eligibility, not utility. You are trying to change the subject, which is one of your favorite “games”. We watch the maximalists do this all the time.
Utility is a part of eligibility.
Come on man, at least pretend that you understand patent law.
LOL
Keep digging, Billy.
Says the man clutching the shovel.
Stultifying.
Answer:
“a beat detector”
“a ventricular beat detector”
“variability determination logic”
“relevance determination logic”
Question:
“What is everything that’s wrong with our patent system?”
Question: why is section 103 not invoked to show the obviousness of this claim, when it is clearly not an abstract idea, at least in the sense of ordinary English meaning (as opposed to Supreme Court metaphysical gymnastics)? There is solid precedent that merely automating a known process is obvious. Why does this particular claim require that we pervert the rule of law with unrestrained judicial discretion? Sure, it’s a little more expensive to go down the obviousness path, but that’s the price we should be paying for a balanced healthy patent system.
District Court litigation is not just “a little more expensive” it is a great deal more expensive, due to almost unlimited discovery and dozens of potential legal and factual issues. Courts simply will not try 103 issues first, early, or before trial on all other issues. That’s why Congress enacted IPRs – to allow 102 or 103 challenges that are at least an order of magnitude cheaper because, unlike litigation, those are the only allowed issues, and raised only via prior patents or publications.
Per Martins comment (and my own earlier comment held up in the queue), HoPB is confusing the claim (the proper focus of the analysis) for an object that could fall within the scope of the claim. This is a beginners error and it’s unfortunate that DC contributed to the confusion with his “flashy” title.
Helpful reminder: a vellum bound book is not “an abstract idea”. A claim to such “a book wherein said book comprises nonobvious instructions” is ineligible because the instructions are abstractions.
This is how it works. Most people understand and agree on the fundamentals. Don’t forget this.
It is fundamental error to try to use a book as an example.
We’ve had an entire post (Wolfgang Pauli’s Not Even Wrong) explicating this.
Only those wanting a certain Ends continue to try to use the vapid “example.”
LOLOLOLOLOLOLOL
“You can’t use that argument because it is too clear and shows everyone why I’m wrong.”
LOL
Except for the fact that your “paraphrase” is dead wrong, you would almost have a point.
As it is, no, no you do not have a point.
It’s not as if the Wolfgang Pauli thing isn’t within your “vast” comprehension of things put on this blog (even if you are incapable of being inte11ectually honest about what has been on the blog).
The whole “object that falls within the scope of the claim” argument is a fallacy.
The meaning of the statutory category itself is the fundamental reason why.
Further, scope is a 112 issue — not a 101 issue.
Yet again, we see those wanting to have a desired Ends not using critical thinking as to the Means being used to get to those Ends.
There is no “fallacy”, and the rest of your comment is self-serving gobbledygO Ok.
My goodness but you stink at this.
Again, except for the fact that you are absolutely wrong, you may have a point.
And again, no, no Malcolm you have no point here.
That “stink” is only more of your usual Accuse Others meme.
A claim can be invalid for multiple reasons, as this one likely is. But how does one know that “variability determination logic” is a “known process” if one doesn’t know what “variability determination logic” is? And if “variability determination logic” is merely logic for determining whether there is no fixed pattern (the ordinary English meaning of those words) then how is that not an abstract idea?
I will not comment on section 101, though I believe there is a possible indefinite issue with your claim 1 in regard to the language;
determination logic to determine a variability ….
determination logic to identify a relevance … ; and …
It really pseudo 112, P6 language, and results in an undefined structure “determination logic” to provide a select function.
Dose the spec link the structure to the function? Midco v. Elekta. From an infringement analysis, I would award the patentee scope to the logic software disclosed and equivalents thereof.
The fact that anyone would even need to consider whether the claimed device is patent eligible just adds to the pile of poop law created by S.C. when Alice walked through the Myriad of Mayo. Consider these two claims.
1. A device comprising a hammer that drops and crushes objects.
2. A device comprising a hammer that drops under the force of gravity and crushes objects.
No two-step analysis for claim 1 even though reliance upon the force of gravity is inherent, but claim 2 requires a two-step analysis.
If a S.C. decision can’t even pass a simple test, then don’t follow the decision. Congress step in!!
Amen.
Schaeffer knew it was a lie. Berkenstock also knew it was a lie. At least Schaeffer is still here.
It took a village. A court clerk, a secretary, a CPA, identity thieves, and a lawyer blocking my due process even using the BOPR to do so!
I would think that what Dennis was hoping to get re the subject patent law moot court competition on a real patent suit was some usable arguments for both sides? [Which of course does not include unsupported personal opinions as to what the law is or ought to be.] But unfortunately, as shown, patent claims like this inspire too many commentators to just dump more gasoline on the burning subject of the Alice unpatentable subject matter defense. The real sore subject for litigators is the big practical advantage to defendants of now having a very preliminary, and thus low cost, defense. [Vis a vis 112 and/or 103 defenses that normally requires a full and very expensive suit through trial, on all possible issues.] Quite a few of the vast majority of patent suit defendants who would previously just pay to settle now try a so-called 101 motion first. [So-called because it is based on Sup. Ct. case law, not on the text of 35 USC 101 itself.]
The issue here of Alice-type unpatentable subject matter defenses in patent litigation and their proof requirements should not be confused with how much Alice has mucked up application examination in certain PTO art units with certain examiners. In application examination there is no valid rationale for not always doing and decisively applying good prior art searches using 112 and/or 102 or 103, irrespective of possible Alice issues.
Well, that’s a healthy amount of spin:
“ The real sore subject for litigators is the big practical advantage to defendants of now having a very preliminary, and thus low cost, defense.”
Those “bad” folk only seeking to punish through litigation or otherwise extort some coin from the happy and otherwise innocent efficient infringers — and all.
Never mind the fact that enforcing one’s rights is set up FOR using litigation, and never mind that we have a patent system and want people to use the patent system to have – and putatively enforce – those very rights…
And I find your last paragraph thought a bit odd. Not that I necessarily disagree that what is going on with the (CAFC-admitted) use of common law evolution through the application of the Alice-Mayo “test” is problematic alone for the judicial branch, and to let the executive branch then use that same judicial branch tactic in examination doubles down on the problematic nature — but what exactly is the “confusion” that you allege to be going on?
I just do not see how ALL of (and each of) 101, 102, 103, and 112 should be “skipped” for what each may serve in each of the prosecution and enforcement phases. It is – and always has been – axiomatic that only those sections of law that may bear on the fact pattern at hand would apply in the enforcement phase, just as it is – and always has been – axiomatic that all sections must be met in the prosecution phase. Who is it then (and why) do you think is “being confused?”
“…Alice has mucked up application examination in certain PTO art units with certain examiners. In application examination there is no valid rationale for not always doing and decisively applying good prior art searches using 112 and/or 102 or 103, irrespective of possible Alice issues.”
Are you suggesting that Alice is being used to short-circuit compact prosecution? If so, do you have any evidence for this?
Ben and Anon, the distinction in litigation versus application prosecution is the fact that District Courts rarely ever decide PRE-trial summary judgment motions for other than non-infringement, especially not on 112 or 103 issues. Whereas in prosecution of applications all rejections are supposed to be done at the SAME time in the first action, unless the applicant then makes drastic claim amendments. If, as rumored, 101 application rejections are being initially made and then withdrawn by some examiners in some arts, giving higher that normal issue rates [because there was not also an adequate prior art rejection], then yes that should be investigated. Likewise, inadequate numbers of 112 non-enablement rejections [in preference to 101 rejections] as appears to be the case here from the specification discussion. Historically the PTO has a low rate of 112 rejections.
“If, as rumored, 101 application rejections are being initially made and then withdrawn by some examiners in some arts, giving higher that normal issue rates [because there was not also an adequate prior art rejection], then yes that should be investigated.”
Of course. I was asking because in post #10 you appeared to be assuming the “rumors” were accurate.
“Likewise, inadequate numbers of 112 non-enablement rejections [in preference to 101 rejections] as appears to be the case here from the specification discussion.”
I personally don’t see an enablement issue with these claims. Claims to easily implemented results should fall under the Written Description requirement, not enablement.
Re”Claims to easily implemented results should fall under the Written Description requirement, not enablement.”
I don’t think that is the case, for several reasons. They are not the same tests. In particular there is a frequent misunderstanding that the 112 requirement for specification enablement is satisfied by asserting 103 obviousness for claim elements, especially for means-function claim elements.
Nothing here that any five year old would find abstract. Might be 112 problems, but the claims recite something tangible. No matter what any SCOTUS judges might say.
Agree.
For all the naysayers here, the title of the article is not “directed to an abstract idea,” but rather IS the item an abstract idea.
There be “scrivining” afoot that people just are not grasping.
An interesting example of this same question has arisen this month with bikes that provide live exercise classes: Peloton v. Flywheel, E.D. Tex. No. 2:18-cv-00390.
Patent eligible.
If the claim were broadened by eliminating the last three elements, the claim is clearly patent eligible.
Adding the last three elements narrows the claims.
Therefore, the claim is necessarily even more patent eligible than the combination of the first two elements standing alone.
Or does it somehow become directed to something else under Alice when elements are added? 🙂
1. A system comprising: a book.
Question – if the specification states “I did not invent the book. The book is pre-existing subject matter” is Claim 1 an eligible claim under 101?
“a book”
Wolfgang Pauli’s not even wrong.
Random, you underwhelm with the known dissemblings.
BTW, do you have any citation for the logic that if a broader claim is eligible than a more limited claim is inherently eligible? Because that was the precise logic of the CAFC in Alice (A computer is eligible therefore a computer performing intermediated settlement is more limited and must be eligible), and that didn’t work out for them.
Do you have a citation for suspending any critical thinking when faced with a broken scoreboard?
Randy Rader knows all about suspending reason and good judgment.
Thanks Malcolm, but your reply has absolutely nothing to do with the point presented.
Try again.
101 requires a new machine, manufacture, composition of matter, or process. The broadened claim is not new. It is not eligible. The question is whether adding the three elements does not make the claim eligible.
So it’s a 102 analysis applied to 101? There’s a job for you at the USPTO.
Wow 68 comments on such an easy question.
In a world where medical science knew an analysis for diagnosing a condition, and electrical science had already created a machine for obtaining the necessary information for performing the diagnosis, a claim to a machine that moves the conventional analysis from a person’s head to a machine processor is not an eligible invention. Conventional determinations of a fact of nature are ineligible, see Mayo. Mere field of use limitations are insufficient to confer eligibility, see Alice.
Similarly, obtaining information, even limited to particular types of information, is abstract, see Electric Power Group. Conventional analysis is abstract, see Electric Power Group. Reporting a conclusion is either abstract or insufficient to confer eligbility, see Mayo, Electric Power Group.
Inventing an ECG is eligible. Realizing a confounding variable in determining arrhythmia may be eligible. Inventing a manner of instructing a machine to perform calculations is eligible. This patentee did not do any of those things. Ordering a machine to take the place of a doctor where there is no technical hurdle in creating the machine or improvement to medical methodology does not advance any art and is not eligible.
True or not, your argument is based on prior art, not some intrinsic characteristic of the claimed invention.
What’s your point? Alice was based on intermediated settlement being a fundamental act and computers being conventional. Why do you think that my argument being “based on prior art” means it’s not valid?
A 112a rejection is based on the knowledge in the art at the time. A 112b rejection is based on whether the art ascribes certain meanings to things. All rejections rely upon the art for context if nothing else.
“What’s your point?”
Maybe that there is a real difference (even if the Supreme Court flubbed it) between patent eligibility and patentability.
Every thread that celebrates the broken scoreboard brings you out of the slime for more of the same slime from you.
The Supreme Court messed things up, but not by confusing 103 and 112.
103: differences between prior art and claimed invention are such that the claimed invention is obvious to a phosita.
112: differences between exceptions and claimed invention are insufficient (for example, differences are conventional, consist of a field of application, do not rise to a “marked” level, …)
The problem is that we don’t know precisely the extent of the exemptions, and the “insufficient” standard is only defined by a collection of cases that are not easily synthesized.
Replace all 112 by 101. Long day…
Scrivining: undefined terms makes the re-written (note: this is expressly not “interpretation”) law of the legislated-from-the-bench Void for Vagueness.
Blah blah. The patent power only allows Congress to grant patents to promote the progress. This disclosure doesn’t promote the progress because it doesn’t allow the art to do anything it couldn’t before. Apparently the electrical arts could perform the measurements, and apparently the medical arts could interpret them to come to a conclusion. They does not appear to be any problem in programming the computer to do the same analysis a person does (i.e. this isn’t a McRO situation where we’re advancing the computer art by teaching it to act like a human; a computer is capable of manipulating numbers), so what did this person contribute to advance the art?
That’s not a confusion of the eligibility/patentability dichotomy. It doesn’t matter how obvious it was to have the computer step into the place of the doctor. The question is if there is some problem that was overcome which would benefit the public to hear a publicized teaching to justify Congress’ use of the patent grant. There wasn’t. Absent that problem, the contribution consists of the abstract statement “Hey, we should use our already existing knowledge to take the doctor’s analysis and do it a computer” which might be a fine idea, but is not invention.
If the founders wanted to give Congress the power to grant a patent over anything, regardless of if someone invented it or not, they’d have done so. They didn’t.