Done at Step 1: When a Claim Is Tied to an Improvement, No Need to Proceed to Alice Step 2By reversing the lower court’s ruling that the asserted claims were not patent-eligible under 35 U.S.C. §  101 in Uniloc v. LG Electronics, the Federal Circuit resurrected Uniloc’s infringement suit against LG Electronics. It also demonstrated what we already know — courts have been inconsistent in their application of the Alice/Mayo test. Nevertheless, this latest opinion provides us with another good example of claim language that the Federal Circuit considers to be non-abstract such that it passes Step 1 of the Alice/Mayo test.

The technology at issue in Uniloc’s U.S. Patent No. 6,993,049 relates to Bluetooth-enabled and other networks involving a primary station and at least one secondary station (e.g., a mouse or a keyboard) that form ad hoc networks with one another. Conventional communication systems alternate between sending inquiry messages to identify/invite new secondary stations to join a piconet and polling secondary stations already connected to the piconet (including “parked” secondary stations) to determine whether they have data to share. According to the specification of the ʼ049 patent, the invention advantageously allows for simultaneous inquiry and polling, thus providing a rapid response time even without an active communication link.

After being sued by Uniloc for infringement of that technology in the Northern District of California, LG moved to dismiss the complaint on the basis that the asserted claims are directed to ineligible subject matter under 35 U.S.C. §  101. The district court granted LG’s motion. In doing so, the claims of the ʼ049 patent, of which claim 2 was deemed representative, were analogized to “abstract data manipulation claims” held by the Federal Circuit in previous decisions to be ineligible. The lower court also found that the asserted claims could not be saved under Step 2 of Alice/Mayo because they failed to recite an inventive concept.  Uniloc appealed.

The Federal Circuit’s analysis started with the explanation that Step 1 of Alice/Mayo “often turns on whether the claims [at issue] focus on specific asserted improvements in computer capabilities or . . . an abstract idea for which computers are invoked merely as a tool.”  Turning specifically to claim 2 of the ʼ049 patent, the court found that the reduction of latency experienced by parked secondary stations in communication systems is indeed an improvement to computer functionality. In fact, likening claim 2 of the ʼ049 patent to the claims in DDR Holdings, LLC v. Hotels.com, L.P., the court explained that “the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks.’”

While LG did not dispute that there was an improvement to computer functionality, it argued that, because the claims use “result-based functional language,” there is not a specific focus on the improvement in the claims. The Federal Circuit disagreed and explained that the lower court’s and LG’s reliance on prior cases where the claims failed to concretely capture any improvement in computer functionality was misplaced. For example, in Two-Way Media, the claims were held to be ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) but, according to the Federal Circuit, did not sufficiently describe how to achieve any purported technological improvement. In contrast, the required “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station” in the claims of the ʼ049 patent was considered to represent a change in the manner of transmitting data that results in reduced response time by peripheral devices.

In short, the claims of the ʼ049 patent recite more than “generalized steps to be performed on a computer using conventional computer activity.” Specifically, the polling required by the claims was directly tied to a technical improvement — reducing latency — even when the claims themselves did not expressly articulate that improvement. Step 1 and done; Step 2 of Alice/Mayo need not be carried out. Now that the claims of the ʼ049 patent survived the § 101 eligibility challenge, LG will need to refocus its defense against Uniloc’s infringement claim. And, this Federal Circuit decision helps to remind drafters to further § 101 eligibility by (1) tying software claims to a technical improvement and (2) detailing the advantages/improvements in the specification.

Fishing for Eligibility in Murky WatersLast week, the Federal Circuit decided that claims related to a method of fishing that involved evaluating the water to be fished were not patent-eligible under 35 U.S.C. § 101. It is a bit of a head scratcher as to why this opinion is deemed precedential — the eligibility analysis employed here under the Alice/Mayo framework certainly did not involve wading into unchartered waters. In any event, In re: Christopher John Rudy is a good reminder as to what the Federal Circuit considers as patent eligible (or not) under the U.S. Supreme Court’s Alice decision. In addition, the opinion makes clear that, when analyzing subject matter eligibility, Federal Circuit caselaw and Supreme Court precedent controls even if USPTO guidance suggests otherwise.

Rudy applied for claims relating to a method for fishing that involved evaluating the water to be fished and selecting the color of fishhook based on a table in the claim.  The Examiner rejected the claims of his patent application as patent ineligible under § 101.  After the Patent Trial and Appeal Board (PTAB) agreed with the Examiner, Rudy appealed the PTAB’s decision.  Among other complaints, Rudy accused the PTAB of improperly relying on the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Office Guidance) “as if it were prevailing law” even though, according to Rudy, the Office Guidance is “a shortcut to ease Mayo / Alice test application, with no force or effect of law and ignoring the law.”  The court agreed with Rudy that the Office Guidance “is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis.”  The opinion confirmed that the two-step framework set forth by the Supreme Court in Alice is the governing rule of law concerning the judicial exceptions to 35 U.S.C. § 101 and “[t]o the extent the Office Guidance contradicts or does not fully accord with [Federal Circuit] caselaw, it is [Federal Circuit] caselaw, and the Supreme Court precedent it is based upon that must control.”

Unfortunately for Rudy, the court concluded that “[a]lthough a portion of the Board’s analysis is framed as a recitation of the Office Guidance, in this particular case the Board’s reasoning and conclusion are nevertheless fully in accord with the relevant caselaw.” In this vein, the court reasoned that at Step 1 of the Alice/Mayo test, i.e., whether the claim at issue is directed to a patent-ineligible concept, the PTAB correctly found that the illustrative claim 34 is directed to the abstract idea “of selecting a fishing hook based on observed water conditions.” The court seized on Rudy’s concessions that “all that is required of the angler is observation, measuring, and comparison with a predetermined chart” and that “even a fish can distinguish and select colors . . . the fisherman can do this too” to conclude that the claim merely relates to the mental process of hook color selection. In fact, dismissing Rudy’s argument that a person fishing might use some instrument to measure the light transmittance of the water, the court explained that, because the claim itself does not include such a limitation, the claim is still abstract.

The court also could not find an inventive concept sufficient to confer patent eligibility under Step 2 of the Alice/Mayo test. In particular, each of the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the hook color) is abstract. Considered together, they merely repeat the core idea of selecting a fishing hook based on observed water conditions. As to Rudy’s complaint that the PTAB should have evaluated all of the rejected claims rather than only considering one independent claim as illustrative, the court explained that there was nothing distinctive in the other rejected claims that would have required independent analysis. Indeed, the court opined that the different hook color chart in the other independent claim would not have led to a different conclusion with regard to eligibility.

It never seems fair to have the benefit of 20/20 hindsight when evaluating these decisions. But it is difficult not to make some observations here. First, this application was filed decades earlier on October 21, 1989. In fact, the PTAB’s affirmation of the Examiner’s rejection of the claims at issue in the appeal came in just shy of the 30-year anniversary of the application filing (and four years after they were finally rejected by the Examiner).  Setting aside the almost mind-blowing aspect that a patent application filed over 30 years ago is even still pending, it raises the obvious question as to why Rudy decided to dig in and fight about the eligibility of the rejected claims when there was nothing unexpected in the court’s decision here. Second, this appeal reminds me of a few quotes from David Lynch’s book entitled Catching the Big Fish: Meditation, Consciousness, and Creativity:

When you’re fishing, you have to have patience. You bait your hook, and then you wait.

If you want to catch little fish, you can stay in the shallow water. But if you want to catch the big fish, you’ve got to go deeper.

Rudy certainly had patience (decades-worth). He definitely went deeper with four PTAB appeals and, including the current one, two appeals to the Federal Circuit — even when there were allowed claims in the application. But, this might just be one of those situations where it was time to cut bait instead of pursuing the bigger fish.

A Method of Diagnostic Sample Preparation Is Held Valid Under Mayo/Myriad, but the Diagnostic Test Was Held InvalidNearly five years ago the U.S. Court of Appeals for the Federal Circuit (CAFC) decided the controversial case of Ariosa v. Sequenom. In Sequenom the invention was a radically new method of fetal genetic testing by amplifying free paternal DNA from the mother’s blood. This test has today largely replaced the previous method of amniocentesis, which was an invasive test with a very high risk of complications. There was no evidence that anyone had ever conceived of testing a pregnant woman’s blood for fetal DNA (paternal or otherwise) for any purpose. The claims were only to selectively amplifying paternal DNA; no abstract diagnostic step was claimed. The CAFC considered the act of amplifying paternal DNA to be a mere recognition of a natural phenomenon: that fetal DNA is present in the mother’s bloodstream. The CAFC decided that remaining claim limitations, such as the use of the polymerase chain reaction (PCR), were too well known and conventional to add any inventive concept to the recognition of the natural phenomenon. Although the CAFC recognized that the invention in question was quite brilliant and highly useful, replacing the risky procedure of amniocentesis with a simple blood test, they famously repeated the Supreme Court’s commandment that “groundbreaking, innovative, or even brilliant” inventions do not necessarily involve an “inventive concept” under the law.

In an unusual turn, the CAFC has held two closely related patents to be valid in a dispute between the same parties. The patent in dispute in the more recent case (Illumina, Inc. v. Ariosa Diagnostics, Inc.) did not claim the fetal DNA test itself, but a method of preparing the sample for testing for fetal DNA. The inventors developed a method to isolate acellular DNA of maternal origin from acellular DNA of fetal origin in the blood of pregnant woman; the isolated fetal DNA can then be genetically analyzed. It was discovered that the maternal DNA is mostly above 500 bp in size, whereas the fetal DNA is mostly below 500 bp in size. Accordingly, the inventors tested and patented a method of separating acellular DNA from blood based on size.  Claim 1 of U.S. Pat. 9,580,751 was one claim analyzed in the decision, which reads:

  1. A method for preparing a deoxyribonucleic acid (DNA) fraction from a pregnant human female useful for analyzing a genetic locus involved in a fetal chromosomal aberration, comprising: (a) extracting DNA from a substantially cell-free sample of blood plasma or blood serum of a pregnant human female to obtain extracellular circulatory fetal and maternal DNA fragments; (b) producing a fraction of the DNA extracted in (a) by: (i) size discrimination of extracellular circulatory DNA fragments, and (ii) selectively removing the DNA fragments greater than approximately 500 base pairs, wherein the DNA fraction after (b) comprises a plurality of genetic loci of the extracellular circulatory fetal and maternal DNA; and (c) analyzing a genetic locus in the fraction of DNA produced in (b).

The court categorically stated that methods of medical diagnosis cannot be patented, but methods of medical treatment can be patented; however, the court also said that the claims in this case were neither methods of medical treatment nor methods of medical diagnosis.

The court applied “step 1” of the Alice/Mayo test for patent eligibility to determine whether the claims were “directed to” one of the judge-made exceptions to patent eligibility, those being “natural phenomena,” “laws of nature,” and “abstract ideas.”  The court found that the invention utilized a “law of nature,” specifically that maternal DNA in the blood tends to be larger than fetal DNA in the blood. However, in the court’s opinion “… the claims are not directed to that natural phenomenon but rather to a patent-eligible method that utilizes it.”

The court justified upholding the validity of this patent while invalidating the patent for the underlying test based on its understanding that the instant patent claimed method “change[s] the composition of the mixture, resulting in a DNA fraction that is different from the naturally-occurring fraction in the mother’s blood. Thus, the process achieves more than simply observing that fetal DNA is shorter than maternal DNA or detecting the presence of that phenomenon.” The court contrasted the current claims with those that were previously invalidated by saying that the previously invalidated claims were directed only to “detecting a natural phenomenon.”

This opinion creates the possibility, that although detecting a biomarker cannot be patented, a process of isolating an analyte can be patented. This provides a potentially advantageous approach to patenting new methods of diagnosis based on newly recognized biomarkers – patent the method of isolating the biomarker or otherwise preparing the sample for analysis. The viability of that approach of course depends on whether the method of isolating the biomarker is otherwise patentable, i.e., it must be novel and non-obvious. This decision further refines the CAFC’s position on the patentability of method of medical diagnosis, methods of medical treatment, and related inventions.