333 F. Supp. 3d 1097
D. Colo.2018Background
- Plaintiffs XY, LLC, Beckman Coulter, Inc., and Inguran, LLC sued Trans Ova for patent infringement and other claims; Count XII accused infringement of U.S. Patent No. RE46,559 (the 559 Patent).
- The 559 Patent claims a method for operating a flow cytometer using at least two detectors, converting detector signals into n‑dimensional data, applying multi‑dimensional mathematical transformations (e.g., rotation, scaling, zooming), classifying particles in real time, and sorting them.
- The asserted novelty centers on the mathematical processing (compensation algorithms) applied to multi‑dimensional data to improve population separation; hardware (flow cytometer, detectors, fluorescence) reflects well‑known prior art.
- Trans Ova moved under Rule 12(c) to invalidate the 559 Patent under 35 U.S.C. § 101 (Alice step analysis); XY sought leave to file a fifth amended complaint to add claims on two related patents (367 and 541); Trans Ova sought leave to add an inequitable‑conduct counterclaim concerning the 559 Patent.
- The court found Claim 1 directed to an abstract idea (mathematical transformation of data) and that the claims add nothing significantly more than the ineligible concept, granted Trans Ova’s § 101 motion, dismissed XY’s Count XII with prejudice, denied XY’s motion to amend as futile, and denied Trans Ova’s amendment as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the 559 Patent claims patent‑eligible subject matter under § 101 (Alice) | Patent claims an inventive application of multi‑detector flow cytometry processing; factual disputes (routine/conventional) preclude disposition | Claims are directed to an abstract mathematical manipulation of multi‑dimensional data and add nothing inventive beyond conventional flow cytometry | Patent is directed to an abstract idea and lacks an inventive concept; § 101 invalidity; Count XII dismissed with prejudice |
| Whether leave to amend to add infringement claims for the 367 and 541 Patents should be granted | Proposed patents assert related inventions derived from same specification and may survive § 101 inquiry; factual issues exist | 367 and 541 derive from same disclosure and their asserted novelty is the same mathematical processing; amendment is futile | Denied as futile because 367 and 541 would fail the same Alice analysis as the 559 Patent |
| Whether adding an inequitable‑conduct counterclaim regarding the 559 Patent should be allowed | N/A (Trans Ova sought to add it) | N/A | Denied as moot given court’s holding that the 559 Patent is invalid under § 101 |
| Whether judicial resolution on § 101 was appropriate at the pleading stage | XY argued factual disputes (e.g., whether elements are well‑understood/routine) preclude resolution | Trans Ova argued claim plain on its face is abstract and lacks inventive concept, permitting disposition on pleadings | Court concluded § 101 resolution appropriate here and resolved it at the Rule 12(c) stage |
Key Cases Cited
- Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm alone not patentable; post‑solution activity cannot make it so)
- Diamond v. Diehr, 450 U.S. 175 (1981) (combination of steps applying an equation may be patentable if it transforms process into inventive application)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (claims that add only conventional steps to a natural law are patent ineligible)
- Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) (two‑step test for patent eligibility: directed to ineligible concept, then inventive concept inquiry)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting, analyzing, and displaying information constitutes an abstract idea)
- Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017) (claim directed to a natural law or correlation is patent ineligible when testing methods are conventional)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (whether claim elements are well‑understood, routine, and conventional can be a factual question preventing disposition on pleadings)