Hitkansut LLC v. United States
115 Fed. Cl. 719
Fed. Cl.2014Background
- Hitkansut LLC and Acceledyne Technologies sue United States (Oak Ridge) in the Court of Federal Claims over U.S. Patent No. 7,175,722 (the ’722 patent).
- The patent discloses a method using Larson–Miller (an Arrhenius-related) relationship to alter physical properties of structures via concurrent energy applications (thermal and another energy form).
- Seven claims are in dispute (claims 1,2,6,7,8,11,14); independent claims 1,7,11,14 are at issue for eligibility under 35 U.S.C. § 101.
- The government moved for summary judgment asserting the claims are patent-ineligible subject matter; Hitkansut cross-moved for a declaration of eligibility.
- The court conducted claim construction (Hitkansut II) and applied the Supreme Court’s eligibility framework (natural laws, phenomena, abstract ideas) across the five identified precedents and related syntheses.
- The court grants the government’s motion in part and denies in part: independent Claims 7 and 14 (and dependent 8) are invalid under § 101; independent Claims 1 and 11 (and dependent 2 and 6) remain potentially eligible; cross-motion denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted independent claims k101-eligible? | Hitkansut argues the claims recite a new, non-obvious method using the Larson–Miller relationship. | Government argues claims are mere recitations of a natural law with no inventive concept. | Partially granted: Claims 7 and 14 invalid; Claims 1 and 11 not yet foreclosed. |
| Does Claim 14 merely claim a calculation of the Larson–Miller equation? | Hitkansut asserts Claim 14 ties to application with two energy forms. | Gov’t contends Claim 14 is a pure calculation of the Larson–Miller relation without invention. | Invalid under § 101 as an unpatentable mathematical calculation. |
| Do Claims 1 and 11 contain sufficient inventive concepts beyond the law-of-nature base? | Claims 1 and 11 describe concurrent energies and a combined rate relationship with practical application. | Gov’t says the core Larson–Miller relation is preemptive and lacks sufficient post-solution activity. | Claims 1 and 11 survive the § 101 analysis; they are not mere equations. |
Key Cases Cited
- Gottschalk v. Benson, 409 U.S. 63 (U.S. 1972) (mathematical formula not patentable)
- Parker v. Flook, 437 U.S. 585 (U.S. 1978) (math formula plus post-solution activity insufficient)
- Diamond v. Diehr, 450 U.S. 175 (U.S. 1981) (patent-eligible when algorithm applied in a transforming process)
- Bilski v. Kappos, 130 S. Ct. 3218 (U.S. 2010) (abstract idea; machine-or-transformation test rejected as sole basis)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (U.S. 2012) (laws of nature with insufficient additional steps are ineligible)
- CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (limits on preemption; analysis of abstract ideas and invention)