Previously featured on Michael Best’s Federal Circuit Weekly blog in March of 2018, Michael Best IP attorney A.J. Bianchi wrote:
The Federal Circuit issued a non-precedential decision delineating between patent-eligible and patent-ineligible improvements in technology related to taking a person’s temperature using a computerized thermometer. On March 8, 2018, the Federal Circuit affirmed that U.S. Patent Nos. 6,292,685 (‘685 patent) and 7,787,938 (‘938 patent) related to a body temperature detector that calculates a person’s core temperature by detecting the temperature of the forehead directly above the superficial temporal artery was directed to patent-eligible subject matter under 35 U.S.C. § 101.
In Exergen Corporation v. Kaz USA, Inc., the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part and remanded the United States District Court for the District of Massachusetts’ post-trial ruling denying the defendant’s motion seeking to invalidate claims of the ‘685 and ‘938 patents as ineligible subject matter under 35 U.S.C. § 101. Nos. 2016-2315, 2016-2341, slip op. at 5 (Fed. Cir. Mar. 8, 2018). The patents-in-suit share specifications and describe that to “locate the temporal artery, a temperature sensor, preferably a radiation detector 20, is scanned across the side of the forehead over the temporal artery while electronics in the detector search for the peak reading which indicates the temporal artery.” Id. at 3. The patents-in-suit further explain that prior art temperature detectors did not “provide the unique combination of elements which enable consistent measurements of core temperature by scanning cross a superficial artery.” Id.
At trial, a jury found all asserted claims infringed and not invalid. Id. at 5. While the jury considered no factual or legal issues regarding § 101 eligibility, the district court noted that the jury’s verdict and the pleadings guided its decision to deny the defendant’s motion for invalidity under § 101. Id. The district court found that even though the claims were based in natural phenomena because the claims recited additional steps they “transformed the underlying natural laws into inventive methods and useful devices that noninvasively and accurately detect human body temperature.” Id. at 7-8. The defendant argued that additional steps were known in the prior art and thus, should not rescue the subject matter. Id. at 8. But the district court found that simply being known in the art did not establish that the subject matter was ineligible for patenting. Id. The district court then held that after considering all the evidence from trial, it could find no evidence that the additional methods were well-understood, routine, and conventional prior to the patented invention. Id. at 9.
On appeal, the Federal Circuit noted that the asserted claims undisputedly employed a natural law to achieve their purpose and thus, the claims were directed to a patent-ineligible concept. Id. at 7. Therefore, the only dispute was a step two dispute about “whether the combination of elements was well-understood, routine and conventional at the time of the invention.” Id. at 6. More specifically, the parties disputed “whether the additional claimed steps beyond calculating the temperature present a novel technique in this computation or add an inventive concept sufficient to transform the claims into a patent eligible application.” Id. at 7.
The Federal Circuit reasoned that the district court’s ruling that the claim elements were not well-understood, routine, and conventional was a question of fact and thus, required clear error deference. Id. at 9. Thus, while the § 101 inquiry was ultimately a legal one, the inquiry can contain underlying factual issues, such as the case before it. Id. at 10. The Federal Circuit went on to affirm the district court’s ruling that some method or step is not well-understood, routine, and conventional merely because they are disclosed in a prior art reference. Id. It reasoned that while the patents-in-suit were directed to the measurement of a natural phenomenon, i.e., core body temperature, the measurement method was not conventional, routine, and well-understood. Id. at 11. Specifically, the patentee had “determined for the first time the relationship between temporal-arterial temperature and core body temperature and incorporated that discovery into an unconventional method of temperature measurement” and thus, the patent incorporated an inventive concept. Id. at 12. Based on those reasons, the Federal Circuit concluded that the district court’s fact finding that the claimed combination was not proven to be well-understood, routine, and conventional was not clearly erroneous. Id. at 14. Therefore, the subject matter was not patent-ineligible.
Writing in dissent, Judge Hughes stated that “the claimed inventions merely calculate a law of nature using conventional, commercially available technology and thus, the asserted claims were patent-ineligible under § 101. Id., dissent at 2. According to Judge Hughes, the district court had erred by finding an inventive concept in the patents-at-suit. Id., dissent at 4. In his dissent, Judge Hughes walks through evidence he believes contradicted the district court’s finding and notes that the district court legally erred by using a law of nature to supply an inventive concept because temperature detectors identical to the claimed invention already existed for other purposes. Id., dissent at 6-7.
This Federal Circuit opinion emphasizes how factual issues resolved by district courts can take the de novo issue of law review of the ultimate § 101 patent-eligibility analysis and leave more deference to the district court. Thus, even if there is evidence in the record that could contradict the district court’s § 101 decision, so long as the district court’s factual finding was not based on a clear error, the Federal Circuit will give deference to the district court’s ruling.
One additional point to note is that the defendant argued that the factual determinations made in the district court’s § 101 analysis should have been made by a jury because the Seventh Amendment guarantees a jury trial on any factual underpinnings of § 101 analysis. Id. at 15. The Federal Circuit noted that such a question required “more in-depth development and briefing” than what had been provided and that it need not reach the issue because the defendant had waived any right to a jury trial on the § 101 issues. Id. Thus, whether the factual underpinning of a § 101 patent-eligibility analysis is a jury issue remains open.
Other Notable Decisions – Week Ending March 9, 2018
Grecia v. McDonald’s Corporation, No. 2017-1672 (Fed. Cir. Mar. 6, 2018) (non-precedential): In Grecia, the Federal Circuit affirmed a Northern District of Illinois district court’s dismissal of that plaintiff’s complaint for failure to state a claim for relief. The plaintiff had alleged that McDonald’s infringed his patents “through its use of the tokenization systems of various credit card companies,” meaning that McDonald’s directly infringed the patents every time it accepted credit cards as a payment tool for food purchases. McDonald’s argued that because it did not control any of the accused system’s components, it did not “use” the claimed system as required to plausibly plead direct infringement under 35 U.S.C. § 271(a). The Federal Circuit found that the plaintiff’s complaint failed to plausibly allege that McDonald’s benefited from each element of the claimed system necessary to allege “use” under § 271(a). The plaintiff’s identification of a “vague benefit” in McDonald’s possible storage of a token in metadata associated with a customer’s primary account number with its credit card for subsequent food purchases was insufficient to state a plausible claim as it was too speculative and not tethered to the claims. Because the plaintiff failed to explain how McDonald’s would benefit from “each and every element of the claimed system” the Federal Circuit affirmed the district court’s dismissal.