By Matt Phifer, J.D.
The claims were directed at patent-eligible improvement of cardiac monitoring device and not just an abstract idea.
The U.S. Court of Appeals for the Federal Circuit has overturned a federal district court’s dismissal of a patent infringement complaint against InfoBionic, Inc. after determining the asserted claims are "directed to a patent-eligible improvement of cardiac monitoring technology and are not directed to an abstract idea." The court remanded the case for further proceedings (CardioNet, LLC v. InfoBionic, Inc., April 17, 2020, Stoll, K.).
CardioNet and Braemar Manufacturing brought the case against InfoBionic, claiming the company infringed on U.S. Patent No. 7,941,207 (the ’207 patent), which they held. The federal district court in Boston dismissed the case, holding the ’207 patent was directed to the abstract idea of identifying atrial fibrillation and atrial flutter by looking at the variability in time between heartbeats and taking into account ventricular beats, and the elements of each claim did not transform the claim into a patent-eligible application.
The ’207 patent, titled "Cardiac Monitoring," describes "cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia." The electronic signals can be detected by placing electrodes on a person’s skin.
The claims in question dealt with a device for detecting and reporting the presence of atrial fibrillation or atrial flutter by detecting beat-to-beat timing of cardiac activity, detecting premature ventricular beats, and determining the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter.
Alice step one. The Supreme Court has identified three subject matters that are not patentable: laws of nature, natural phenomena, and abstract ideas. Step one of the Alice test requires the court to consider claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter."
The Federal Circuit looked at whether the claims "focus 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 court determined the claims in question focus on a specific means or method to improve cardiac monitoring technology. The device more accurately detects atrial fibrillation and atrial flutter distinctly from other arrhythmias. This means patients can get more reliable and immediate treatment. Beyond the initial claim, the dependent claims "specify the physical features of the device of claim 1."
The court agreed with CardioNet that the ’207 patents are similar to the previously claims directed toward technological improvements. The court went on to say there was nothing in the record to indicate that the device merely computerized pre-existing techniques for diagnosing atrial fibrillation and atrial flutter.
The appeals court held the lower court erred when it determined the claims only automated known techniques and in comparing the claims to ineligible "computer -implemented claims for collecting and analyzing data to find specific events." CardioNet argued that the claimed invention constituted an improvement to cardiac monitoring technology and was not an abstract idea.
Since the Federal Circuit determined that the claims were not an abstract idea as defined using Alice step one, it did not have to discuss Alice step two.
Remand. The court determined that it could not resolve an Alice step on issue at the 12(b)(6) stage without remanding to assess the state of the art of the invention date to determine if the asserted claims are directed to automating a long-used practice by doctors without remanding the case. A patent claim must meet other criteria, such as being novel and nonobvious "over the prior art." It also must be adequately described. Determining subject matter eligibility is only a first step, according to the court. The court held the Alice framework does not require the evaluation of prior art or facts "outside of the intrinsic record regarding the state of the art at the time of the invention." The Federal Circuit remanded the case.
Dissenting-in-part opinion. Circuit Judge Timothy Dykfiled an opinion concurring-in-part and dissenting-in-part—agreeing with the majority that the claims are patent eligible, but disagreeing the majority on the ground that it addressed issues not argued by the parties and suggested approaches "not consistent with Supreme Court and circuit authority."
Judge Dyk wrote that no case has ever stated the nature of a longstanding practice cannot be determined by looking at prior art. He said the majority’s views are dicta, that both parties agreed longstanding practice was relevant for Alice step one analysis, any limitation on using extrinsic evidence would be inconsistent with binding authority, and Federal Circuit cases have not limited analysis to the intrinsic record.
This case is No. 19-1149.
Attorneys: Ching-Lee Fukuda (Sidley Austin LLP) for CardioNet, LLC and Braemar Manufacturing, LLC. Maximilian A. Grant (Latham & Watkins LLP) for InfoBionic, Inc.
Companies: CardioNet, LLC; Braemar Manufacturing, LLC; InfoBionic, Inc.
MainStory: TopStory Patent GCNNews FedCirNews
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