CARDIONET, LLC, BRAEMAR MANUFACTURING, LLC, Plaintiffs-Appellants v. INFOBIONIC, INC, Defendant-Appellee
2019-1149
United States Court of Appeals for the Federal Circuit
April 17, 2020
Appeal from the United States District Court for the District of Massachusetts in No. 1:17-cv-10445-IT, Judge Indira Talwani.
GABRIEL BELL, Latham & Watkins LLP, Washington, DC, argued for defendant-appellee. Also represented by MAXIMILIAN A. GRANT; CHARLES SANDERS, Boston, MA.
Before DYK, PLAGER, and STOLL, Circuit Judges.
Opinion dissenting in part and concurring in the result filed by Circuit Judge DYK.
STOLL, Circuit Judge.
CardioNet, LLC and Braemar Manufacturing, LLC (collectively, “CardioNet“) appeal the district court‘s dismissal of their patent infringement complaint against InfoBionic, Inc. The district court held that the asserted claims of CardioNet‘s U.S. Patent No. 7,941,207 are ineligible under
BACKGROUND
I
Anomalies in the electrical activity of a patient‘s heart can indicate the presence of certain physiological conditions ranging from benign to life-threatening. Among those conditions are various different types of cardiac arrythmias (abnormal heart rhythms), including atrial fibrillation, atrial flutter, normal sinus rhythm irregularity, irregularity from various types of heart blocks, irregularity associated with premature ventricular contractions, and ventricular tachycardia.
Atrial fibrillation and atrial flutter involve “the loss of synchrony between the atria and the ventricles” of the heart. ‘207 patent col. 1 ll. 24–25, 34–35. A patient may experience “short” or “sustained” episodes of atrial fibrillation or atrial flutter. Short episodes “generally include between two and 20 [heart]beats and may or may not have clinical significan[ce].” Id. at col. 5 ll. 33–35. By contrast,
Ventricular tachycardia, or V-TACH, is another form of cardiac arrythmia and is characterized by “a rapid succession of ventricular contractions (e.g., between 140 and 220 per minute) generally caused by an abnormal focus of electrical activity in a ventricle.” Id. at col. 9 ll. 41–44. Ventricular beats “are irregular beats that interrupt the normal heart rhythm” and that “may be precipitated by factors such as alcohol, tobacco, caffeine, and stress.” Id. at col. 9 ll. 10–12, 19–20. The “occurrence of ventricular beats can be used to identify ventricular tachycardia (e.g., when there are three or more consecutive ventricular beats).” Id. at col. 9 ll. 16–19. V-TACH “can last from a few seconds to several days and can be caused by serious heart conditions such as a myocardial infarction.” Id. at col. 9 ll. 44–46.
The ‘207 patent is titled “Cardiac Monitoring” and claims priority to an application filed on January 21, 2004. The ‘207 patent describes cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia. Electrical signals of the heart can be measured by placing electrodes on a patient‘s skin. Id. at col. 1 ll. 17–20, col. 5 ll. 1–7. The patent teaches that its systems and techniques determine the beat-to-beat variability in heart rate over a series of successive heartbeats. Specifically, they determine the variability in heart rate “over a series of between 20 and 200 of the recent R to R intervals,” or the timing between “R-waves.” Id. at col. 2 ll. 4–6, 47–49. An R-wave is the peak of what is referred to as the “QRS
Id. Fig. 2. A schematic of the ‘207 patent‘s cardiac monitoring system is shown below in Figure 8:
Id. Fig. 8. The written description explains that in detecting atrial fibrillation and atrial flutter, the systems and techniques include accounting for the presence of irregular ventricular beats, which are “negatively indicative” of atrial fibrillation and atrial flutter. Id. at col. 1 ll. 61–65, col. 2 ll. 53–61. The patent recognizes that the “occurrence of ventricular beats is generally unrelated to” atrial
Id. Fig. 10.
Independent claim 1 recites:
1. A device, comprising:
a beat detector to identify a beat-to-beat timing of cardiac activity;
a ventricular beat detector to identify ventricular beats in the cardiac activity;
variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats;
relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and
an event generator to generate an event when the variability in the beat-to-beat timing is identified as relevant to the at least one of atrial fibrillation
and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector.
Id. at col. 12 ll. 12–27.
Dependent claims 2, 3, 7, and 10–12 depend from claim 1 and further define the features of the device or its operation:
2. The device of claim 1, wherein the relevance determination logic is to accommodate variability in the beat-to-beat timing caused by ventricular beats by weighting ventricular beats as being negatively indicative of the one of atrial fibrillation and atrial flutter.
3. The device of claim 1, wherein the variability determination logic is to compare times between R-waves in three successive QRS complexes to determine the variability in the beat-to-beat timing.
***
7. The device of claim 1, wherein the event generator is to generate an event by performing operations comprising: collecting data associated with the collection of beats; and transmitting the data associated with the collection of beats to a remote receiver.
***
10. The device of claim 1, wherein the relevance determination logic comprises logic to identify the relevance of the variability using a non-linear function of a beat-to-beat interval.
11. The device of claim 1, wherein the beat detector comprises a QRS detector.
12. The device of claim 1, further comprising a sensor that includes two or more body surface
electrodes subject to one or more potential differences related to cardiac activity.
Id. at col. 12 ll. 28–36, 52–56, col. 13 ll. 5–13.
Similar to claim 2, dependent claim 22 recites “weighting” ventricular beats as being negatively indicative of atrial fibrillation or atrial flutter:
22. The article of claim 20,2 determining the relevance comprises: identifying a beat of the collection as a ventricular beat, and weighting the beat as being negatively indicative of the one of atrial fibrillation and atrial flutter.
Id. at col. 14 ll. 39–43.
The ‘207 patent describes a number of advantages achieved by the claimed cardiac monitoring device. For instance, by analyzing the beat-to-beat timing for atrial fibrillation or atrial flutter while also taking into account the
II
InfoBionic filed a motion to dismiss for failure to state a claim pursuant to
At step one, the district court concluded that the claims are directed to the abstract idea that atrial fibrillation and atrial flutter “can be distinguished by focusing on the variability of the irregular heartbeat.” CardioNet, LLC v. InfoBionic, Inc., 348 F. Supp. 3d 87, 93 (D. Mass. 2018) (District Court Op.); see also id. at 97 (further defining the abstract idea as “identifying” atrial fibrillation or atrial flutter “by looking at the variability in time between heartbeats and taking into account ventricular beats“). The district court rejected CardioNet‘s argument that the claimed invention “represents an improvement to the function of cardiac monitoring devices,” including “more accurate and clinically significant” detection of atrial fibrillation and atrial flutter. Id. at 93 (citation omitted). The district court concluded that although the “idea of using a machine to monitor and analyze heart beat variability and interfering beats so as to alert the user of potential [atrial fibrillation or atrial flutter] events may well improve the field of cardiac telemetry,” CardioNet “d[id] not identify improvements to any particular computerized technology.” Id.
CardioNet appeals. We have jurisdiction pursuant to
DISCUSSION
We apply regional circuit law when reviewing the district court‘s dismissal of a complaint for failure to state a claim. Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 749 (Fed. Cir. 2019). The First Circuit reviews such dismissals de novo, accepting as true all well-pleaded facts alleged in the complaint and drawing all reasonable inferences in favor of the non-moving party. In re Loestrin 24 Fe Antitrust Litig., 814 F.3d 538, 549 (1st Cir. 2016). Patent eligibility under
I
In Alice, the Supreme Court articulated a two-step test for examining patent eligibility when a patent claim is alleged to involve one of these three types of subject matter. The “abstract ideas” category, the subject matter at issue in this case, embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.‘” Id. at 218 (alteration in original) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). The Supreme Court recognized, however, that “at some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.‘” Id. at 217 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)). “Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.” Id. Rather, “applications” of abstract concepts “to a new and useful end . . . remain eligible for patent protection.” Id. (quoting Benson, 409 U.S. at 67).
At step one, we consider the claims “in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quot-
“If the claims are directed to a patent-ineligible concept, however, we next consider Alice step two.” Id. In this step, we consider “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78–79). This second step is “a search for an ‘inventive concept‘—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.‘” Id. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
II
We begin our analysis with Alice step one. In doing so, we look to 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.” McRO, 837 F.3d at 1314 (citations omitted). We hold
A
When read as a whole, and in light of the written description, we conclude that claim 1 of the ‘207 patent is directed to an improved cardiac monitoring device and not to an abstract idea. In particular, the language of claim 1 indicates that it is directed to a device that detects beat-to-beat timing of cardiac activity, detects premature ventricular beats, and determines the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter, taking into account the variability in the beat-to-beat timing caused by premature ventricular beats identified by the device‘s ventricular beat detector. In our view, the claims “focus on a specific means or method that improves” cardiac monitoring technology; they are not “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, 837 F.3d at 1314 (citations omitted).
The written description confirms our conclusion. It explains that, by identifying “variability in the beat-to-beat timing . . . as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector,” the claimed invention achieves multiple technological improvements. First and foremost, the device more accurately detects the occurrence of atrial fibrillation and atrial flutter—as distinct from V-TACH and other arrhythmias—and allows for more reliable and immediate treatment of these two medical conditions. ‘207 patent col. 3 ll. 6–16, 21–26, 35–39. Indeed, the written description reports that when analyzing real-world arrhythmia data, the device demonstrated both high “positive predictivity” of, and high “sensitivity” to, atrial fibrillation and atrial flutter, meaning that it effectively avoids false positives and false negatives, respectively, in detecting
The dependent claims are similarly directed to patent-eligible subject matter, as they further specify the physical features or operation of the device of claim 1. For instance, claim 2 additionally requires “weighting” ventricular beats “as being negatively indicative of the one of atrial fibrillation and atrial flutter.” Claim 22, which depends from independent claim 20, recites a similar limitation. Claim 3 is additionally directed to “compar[ing] times between R-waves in three successive QRS complexes to determine the variability in the beat-to-beat timing.” Claim 7 is additionally directed to “transmitting the data associated with the collection of beats to a remote receiver.” Claim 10 additionally requires “using a non-linear function of a beat-to-beat interval.” Claim 11 is additionally directed to the use of a “QRS detector.” Finally, claim 12 is additionally directed to using “a sensor that includes two or more body surface electrodes subject to one or more potential differences related to cardiac activity.” Thus, each of these dependent claims narrows the device‘s specific technical features or operations.
We agree with CardioNet that the claims of the ‘207 patent are akin to claims we have previously determined are directed to technological improvements. For instance, the asserted claims are similar to those we held eligible in Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017). There, the claims recited a “computer memory system” that used “programmable operational characteristics” of a computer‘s cache memory based on the type of processor connected to the memory system. Id. at 1257. On appeal from a dismissal under
Similarly, here, the ‘207 patent‘s written description identifies a number of advantages gained by the elements recited in the claimed cardiac monitoring device. By analyzing the “variability in the beat-to-beat timing” for “atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector,” the claimed invention more accurately detects the occurrence of atrial fibrillation and atrial flutter, as distinct from V-TACH and other arrhythmias. ‘207 patent col. 3 ll. 6–16, 21–26, 35–39. We accept those statements as true and consider them important in our determination that the claims are drawn to a technological improvement.
The ‘207 patent claims are also similar to those we held eligible in McRO. The patent at issue in McRO claimed a “method for automatically animating lip synchronization and facial expression of three-dimensional characters.” 837 F.3d at 1307. We reversed the district court‘s grant of judgment on the pleadings under
In this case, there is likewise no suggestion in the ‘207 patent‘s written description that doctors were “previously employing” the techniques performed on the claimed device. Nothing in the record in this case suggests that the claims merely computerize pre-existing techniques for diagnosing atrial fibrillation and atrial flutter. Moreover, as in McRO, the written description of the ‘207 patent confirms that the asserted claims are directed to a specific technological improvement—an improved medical device that achieves speedier, more accurate, and clinically significant detection of two specific medical conditions out of a host of possible heart conditions.
B
At the heart of the district court‘s erroneous step one analysis is the incorrect assumption that the claims are directed to automating known techniques. See District Court Op., 348 F. Supp. 3d at 93. InfoBionic reiterates this argument on appeal, asserting that “the claims are drawn to automating basic diagnostic processes that doctors have long used.” Appellee‘s Br. 2; see also id. at 11 (“The claims recite the basic steps that any doctor could (and would)
Likewise, the district court erred by disregarding the written description‘s recitation of the advantages of the claimed invention. In opposing InfoBionic‘s motion, CardioNet had argued that, based on the patent‘s disclosure, the claimed invention “achieve[s] more accurate and clinically significant” detection of atrial fibrillation and atrial flutter, and thereby constitutes an improvement to cardiac monitoring technology as opposed to an abstract idea. District Court Op., 348 F. Supp. 3d at 93 (citation omitted). The district court dismissed this argument, concluding that CardioNet did “not identify improvements to any particular computerized technology.” Id. On a motion to dismiss under
Furthermore, the district court erred in analogizing the ‘207 patent claims to certain ineligible “computer-implemented claims for collecting and analyzing data to find specific events.” District Court Op., 348 F. Supp. 3d at 92–93. In particular, the district court found comparable our decisions in Berkheimer and FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016). Generalizing the asserted claims as being directed to collecting, analyzing, and reporting data is inconsistent with our instruction that courts “be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, 837 F.3d at 1313 (citations omitted). In stark contrast to the claims in Berkheimer and FairWarning IP, the claims of the ‘207 patent do not merely collect electronic information, display information, or embody mental processes. Indeed, the claims of the ‘207 patent do not “fit into the familiar class of claims that” focus on “certain independently abstract ideas that use computers as tools.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (quoting Elec. Power, 830 F.3d at 1354). Rather, as discussed above, they fit into the class of claims that focus on “an improvement in computers [and other technologies] as tools.” Id. Accordingly, the district court‘s and InfoBionic‘s reliance on these cases was misplaced.
Because we conclude under Alice step one that the asserted claims of the ‘207 patent are not directed to an abstract idea, we do not reach Alice step two. See Data Engine, 906 F.3d at 1011; Visual Memory, 867 F.3d at 1262. The claims are patent eligible under
C
Finally, we turn to a dispute raised in the parties’ briefs and oral argument, namely, whether we can resolve this Alice step one issue at the
The analysis under Alice step one is whether the claims as a whole are “directed to” an abstract idea, regardless of whether the prior art demonstrates that the idea or other aspects of the claim are known, unknown, conventional, unconventional, routine, or not routine. See Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the
Indeed, subject matter eligibility under
It is true, as the dissent contends, that the Supreme Court in Alice and Bilski v. Kappos identified as abstract claims directed to performing on a computer “fundamental economic practice[s] long prevalent in our system of commerce.” Alice, 573 U.S. at 219 (holding ineligible patent claims directed to the concept of “intermediated settlement,” i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (holding ineligible claims of a patent application directed to the “basic concept of hedging, or protecting against risk,” in the field of commodities trading).
But, in neither Bilski nor Alice did the Court rely on an examination of the prior art as part of its step one inquiry. This is consistent with the other cases cited by the dissent. In determining what the claims are directed to and whether they are directed to an abstract idea, a court may well consult the plain claim language, written description, and prosecution history and, from these sources, conclude that the claims are directed to automating a longstanding or fundamental practice.
Similarly, the court may consult the intrinsic evidence and conclude that the claims are directed to improving the functionality of a computer or network. The court need not consult the prior art to see if, in fact, the assertions of improvement in the patent‘s written description are true.
This court‘s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), confirms this point. In Enfish, we stated that “the first step in the Alice inquiry asks whether the focus of the claims is on the specific asserted improvement in computer capabilities” or, instead, on an abstract idea “for which computers are invoked merely as a tool.” Id. at 1335-36 (emphasis added). In making this inquiry, we examined the patents’ shared written description, including its teachings of the “multiple benefits flow[ing] from th[e] design” of the claimed self-referential table for a computer database. Id. at 1333. Our conclusion that the claims were directed to a patent-eligible invention was based on the patents’ teachings that the claimed “self-referential table functions differently than conventional database structures” and “achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.” Id. at 1337; see also id. at 1339 (“The specification‘s disparagement of conventional data structures, combined with language describing the ‘present invention’ as including the features that make up a self-referential table, confirm that our characterization of the ‘invention’ for purposes of the
Contrary to the dissent‘s suggestions, we do not hold today that it is impermissible for courts to “look[] outside the intrinsic evidence” as part of their Alice step one inquiry, Dissent Op. 9, or that all evidence presented by the parties that doctors have long used the claimed techniques would be irrelevant to the inquiry in this case. It is within the trial court‘s discretion whether to take judicial notice of a longstanding practice where there is no evidence of such practice in the intrinsic record. But there is no basis for requiring, as a matter of law, consideration of the prior art in the step one analysis in every case. If the extrinsic evidence is overwhelming to the point of being indisputable, then a court could take notice of that and find the claims directed to the abstract idea of automating a fundamental practice, see Bilski, 561 U.S. at 611—but the court is not required to engage in such an inquiry in every case.
Thus, we simply clarify that step one of the Alice framework does not require an evaluation of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention. Neither Bilski, Alice, nor this court‘s precedent endorses such an analysis. The dissent also contends that “numerous cases decided by our court held that claims were abstract because they claimed longstanding practices.” Dissent Op. 7. That unqualified statement is simply incorrect. Accordingly, our analysis at Alice step one involves examining the patent claims in view of the plain claim language, statements in the written description, and the prosecution history, if relevant. See, e.g., Athena, 915 F.3d at 750 (“To determine whether a claim is directed to an ineligible concept, we have frequently considered whether the claimed advance improves upon a technological process or merely an ineligible concept, based
CONCLUSION
For the foregoing reasons, we reverse the district court‘s determination that the asserted claims of the ‘207 patent recite patent-ineligible subject matter and remand for further proceedings.
REVERSED AND REMANDED
COSTS
Costs to Appellants.
for the Federal Circuit
CARDIONET, LLC, BRAEMAR MANUFACTURING, LLC,
Plaintiffs-Appellants
v.
INFOBIONIC, INC,
Defendant-Appellee
2019-1149
Appeal from the United States District Court for the District of Massachusetts in No. 1:17-cv-10445-IT, Judge Indira Talwani.
DYK, Circuit Judge, dissenting in part and concurring in the result.
This is a routine case easily resolved by existing precedent. Under that approach, I agree with the majority that the claims have not been shown to be patent ineligible under
I
The ‘207 patent is directed to an improved cardiac monitoring device. Defendant contended that the device is
Our court has repeatedly held that simply computerizing data analysis previously performed without a computer does not give rise to a patent-eligible invention at Alice step one. As we explained in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), “our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Id. at 1370.
On appeal, the patentee argues that “[t]he key factual dispute is... whether the claims are directed to an improvement to existing technology and contain an inventive concept... or whether the claims are ‘nothing more than a computerized version of a doctor‘s approach to diagnosis,’ as [defendant] contends.” Reply Br. 34. It concludes that “the record lacks any evidence that supports the district court‘s key factual finding.” Appellant‘s Br. 49.
The majority concludes, and I agree, that the patentee is correct: the defendant has not established that the patent simply computerizes the use of longstanding data analysis. On appeal, the defendant does not argue that the case should be remanded to allow the defendant to develop a fuller record. See, e.g., Appellee‘s Br. 47 (“There are no relevant factual disputes.“); Oral Arg. at 22:25-41 (stating that “it doesn‘t matter” that the record does not clearly show that the claimed technique was long prevalent). Instead the defendant argues only that the intrinsic evidence
II
My problem with the majority opinion is that, after determining in Parts II.A and II.B that the record does not support the defendant‘s contentions, it goes beyond this simple resolution in Part II.C. The majority states that it is “not hold[ing]... that it is impermissible for courts to ‘look[] outside the intrinsic evidence’ as part of their Alice step one inquiry, or that all evidence presented by the parties that doctors have long used the claimed techniques would be irrelevant to the inquiry in this case,” but the majority concludes that “step one of the Alice framework does not require an evaluation of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention.” Maj. Op. 22 (citation omitted) (quoting Dissent Op. 9). At the same time, the majority states “[i]t is within the trial court‘s discretion whether to take judicial notice of a longstanding practice where there is no evidence of such practice in the intrinsic record. But there is no basis for requiring, as a matter of law, consideration of the prior art in the step one analysis in every case.” Id.
Thus, on the one hand, the majority recognizes that establishing that a practice is longstanding is clearly relevant, but on the other hand seems to suggest undefined limits on the use of extrinsic evidence to determine whether a practice was longstanding in the prior art at the time of the invention. I agree that the
First, the majority‘s views are dicta. As discussed above, neither party in the briefing before this court requested a remand to the district court to make the determination of whether the doctors had long practiced the claimed process.1 The parties’ focus was almost entirely on whether the existing record showed this was a longstanding practice.2
Second, both parties agreed that longstanding practice was relevant to the Alice step one analysis. Oral Arg. at 9:16-37 (“There are factual determinations that need to be made here on what was done by doctors.” (Appellant) (emphasis added)); Reply 34 (“The key factual dispute is... whether the claims are directed to an improvement to existing technology and contain an inventive concept... or whether the claims are ‘nothing more than a computerized version of a doctor‘s approach to diagnosis,’ as InfoBionic contends.“). Neither party argued that extrinsic evidence of the prior art is irrelevant to determining whether a practice is longstanding. Indeed, the patentee repeatedly recognized that extrinsic evidence of the prior art is relevant. See Appellant‘s Br. 47 (“[The defendant] did not rely on any prior art that discloses negatively weighting premature ventricular beats or the use of non-linear statistics to identify [atrial fibrillation and atrial flutter]. Nor did [the defendant] rely on an expert declaration demonstrating that either technique, individually or in combination with the other elements of the asserted claims, was known.“).3 Moreover, the parties both
Third, any limitation on the use of extrinsic evidence would be inconsistent with binding authority. The Supreme Court and our cases have consistently held that whether a practice is “longstanding” or “long prevalent” is central to the step one inquiry and have never suggested that prior art is irrelevant to that question. In Bilski v. Kappos, 561 U.S. 593 (2010), the Court held that “[t]he concept of hedging... is an unpatentable abstract idea” because “[h]edging is a fundamental economic practice long prevalent in our system of commerce.” Id. at 611 (emphasis added) (quoting In re Bilski, 545 F.3d 943, 1013 (Fed. Cir. 2008) (Rader, J., dissenting)). In Alice Corp. Pty. v. CLS Bank Int‘l, 573 U.S. 208 (2014), the Supreme Court explained that “the concept of intermediated settlement at issue” was “squarely within the realm of ‘abstract ideas,‘” id. at 221, because, “[l]ike the risk hedging in Bilski, the concept of intermediated settlement [in Alice] [wa]s ‘a fundamental economic practice long prevalent in our system of commerce,‘” id. at 219 (emphasis added) (quoting Bilski v. Kappos, 561 U.S. 593, 611 (2010)). The Court
In making the determination that practices are longstanding in the
Our cases have similarly not limited the analysis to the intrinsic record. For example, in Capital One Bank, in finding that claims directed to customizing marketing was ineligible, we relied on the fact that “newspaper inserts had often been tailored based on information known about the customer—for example, a newspaper might advertise based on the customer‘s location.” 792 F.3d at 1369 (emphasis added). In Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016), we found claims for “providing out-of-region access to regional broadcast content” to be an abstract idea by relying on the fact that “[t]he practice of conveying regional content to out-of-region recipients has been employed by nearly every form of media that has a local distribution.” Id. at 1258 (emphasis added). In Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass‘n, 776 F.3d 1343 (Fed. Cir. 2014), we found claims to a method for recognizing images from hard copy documents to be abstract by considering that “banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, and identity of account holder, and stored that information in their records.” Id. at 1347 (emphasis added). In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), we found that “the claims are directed to an abstract idea of parsing and comparing data” by considering patentee‘s “admi[ssion] that [the claimed] parsers had existed for years prior to his patent.” Id. at 1366-67 (emphasis added). In In re Brown, 645 F. App‘x 1014 (Fed. Cir. 2016), we found at step one that “the claims are drawn to the abstract idea of assigning hair designs to balance head shape” because the patent owner admitted “that the hair cutting step ‘employ[ed] a well-known concept’ [and] that the hair patterns applied are ‘industry recognized.‘” Id. at 1016 (emphasis added).4 In each of these cases, the court did not
Significantly, this approach has been recognized in the very cases on which the majority itself relies. Maj. Op. 21-22. In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), we found that “filtering content [wa]s an abstract idea because it is a longstanding, well-known method of organizing human behavior,” though the claims provided an inventive concept at step two by “carv[ing] out a specific location for the filtering system (a remote ISP server) and require[d] the filtering system to give users the ability to customize filtering for their individual network accounts.” Id. at 1348, 1352. In FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016), we found ineligible claims “directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected.” Id. at 1094. We noted, in finding the claims directed to an abstract idea at step one, that the claims ask “the same questions... that humans in analogous situations detecting fraud have asked for decades, if not centuries” and thus “merely implement an old practice in a new environment.” Id. at 1094-95. In making the step one determination, we thus have persistently looked outside the intrinsic evidence.
The majority, while recognizing the relevance of longstanding practice in the step one analysis, attempts to distinguish the above cases by suggesting undefined limits on the use of prior art to determine the “state of the art at the time of the invention.” Maj. Op. 22. The majority opinion cites to no authority to support any such limits. Determining whether something is a longstanding practice necessarily requires an analysis of whether the practice is part of a well-established “state of the art at the time of the invention.” Id. “Evidence of the state of the art... consists of proof of what was old and in general use at the time of the alleged invention. It is received... to show what was then old, [and] to distinguish what was new....” Brown v. Piper, 91 U.S. 37, 41 (1875).
The panel does not purport to overrule prior cases, nor could it. But the language of the panel opinion is likely to sow confusion for both the district court and the bar.
I respectfully dissent from Part II.C of the majority opinion, and concur in the result.
Notes
An article comprising one or more machine-readable media storing instructions operable to cause one or more machines to perform operations, the operations comprising: determining a beat-to-beat variability in cardiac electrical activity; determining a relevance of the variability over a collection of beats to one of atrial fibrillation and atrial flutter using a non-linear function of a beat-to-beat interval; and identifying one of an atrial fibrillation event and an atrial flutter event based on the determined relevance, the event being a period in time when the information content of the cardiac electrical activity is of increased relevance to the one of atrial fibrillation and atrial flutter.
Id. at col. 14 ll. 12–24. See also Appellant‘s Br. 49 (“[T]he record lacks any evidence that supports the district court‘s key factual finding.“); Appellee‘s Br. 29 (“[T]he specification makes plain that the purported advantages [of the claimed device]... are rooted in the abstract idea itself—the ability to distinguish [atrial fibrillation and atrial flutter] from other cardiac irregularities by accounting for premature ventricular beats, which is the type of mental process doctors long performed.“); Reply Br. 23 (“InfoBionic... falsely asserts without evidentiary support that the ‘207 patent merely computerized routine diagnostic methods, [and] erroneously ignores the specification‘s teachings about the benefits of the invention....“); id. at 1 (“In addition to lacking any evidence that proves the ‘207 patent merely computerizes conventional techniques, InfoBionic ignores