In Yu v. Apple, Inc., [2020-1760, 2020-1803] (June 11, 2021), the Federal Circuit affirmed the district court dismissal pursuant to FRCP Rule 12(b)(6) on the grounds that the asserted claims of U.S. Patent No. 6, 611,289, on Digital Cameras Using Multiple Sensors with Multiple Lenses, were invalid under 35 U.S.C. § 101.

The district court held that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The district court further concluded that the asserted claims lack an inventive concept, noting the complete absence of any facts showing that the claimed elements were not well-known, routine, and conventional.”

The Federal Circuit concluded that given the claim language and the specification, that claim 1 is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery” rather than “a specific means or method that improves the relevant technology.” The Federal Circuit further observed that “[o]nly conventional camera components are recited to effectuate the resulting “enhanced” image—two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor. These conventional components perform only their basic functions and are set forth at a high degree of generality.

The Federal Circuit, perhaps unfairly used the patent drafter’s words to seal the fate of the claims, noting that the specification identified a “great need for a generic solution that makes digital cameras capable of producing high resolution images without [high] cost,” and concluding that “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea.

The Federal Circuit also dispatched the concern that the claim was to an improved machine, noting in a footnote that “whether a device is ‘a tangible system (in § 101 terms, a “machine”)’ is not dispositive. See Alice, 573 U.S. at 224; In re TLI Commc’ns, 823 F.3d at 611 (‘[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.’). As discussed herein, the focus of claim 1 is the abstract idea.”

The Federal Circuit also noted the disparity between the broad scope of the claim, and the particular configuration described in the specfication:

In these circumstances, the mismatch between the specification statements that Yu points to and the breadth of claim 1 underscores that the focus of the claimed advance is the abstract idea and not the particular configuration discussed in the specification that allegedly departs from the prior art.

At step two, the Federal Circuit concluded that claim 1 does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention, because claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea identified above. The Federal Circuit rejected Yu’s argument about the unconventional architecture, saying that even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility.

The Federal Circuit affirmed the judgment of the district court.

In Simio, LLC, v. Flexsim Software Products, Inc., [2020-1171](December 29, 2020), the Federal Circuit affirmed the dismissal of Simio’s action for infringement of U.S. Patent No. 8,156,468 System and Method for Creating Intelligent Simulation Objects Using Graphical Process Descriptions, and denial of Simio’s motion for leave to amend its Complaint.

The district court found that (1) the claims are directed to “the decades-old computer programming practice of substituting text[-]based coding with graphical processing,” which the court determined was an ineligible abstract idea and (2) considering the claim elements both individually and as an ordered combination, FlexSim “met its burden of showing no inventive concept or alteration of computer functionality sufficient to transform the system into a patent-eligible application.”

The Federal Circuit said that the ’468 patent showcases its key advance: using graphics instead of programming to create object-oriented simulations.  However, the Federal Circuit also noted that the ’468 patent acknowledges that using graphical processes to simplify simulation building has been done since the 1980s and 1990s.  The Federal Circuit said that “[s]imply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.”  The Federal Circuit said that the claim is directed to the use of conventional or generic technology i.e., graphical processing generally in a well-known environment i.e., object-oriented simulations, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.

The Federal Circuit rejected Simio’s argument that the claimed invention “improves on the functionality of prior simulation systems through the use of graphical or process modeling flowcharts with no programming code required.” The Federal Circuit said that “improving a user’s experience while using a computer application is not, with-out more, sufficient to render the claims directed to an improvement in computer functionality.”  Citing Customedia, the Federal Circuit added: claiming the improved speed or efficiency inherent with applying the abstract idea on a computer is insufficient to render the claims patent eligible as an improvement to computer functionality.

At Step 2 of the Alice analysis, the Federal Circuit found that a claim directed to the idea of using graphics instead of programming to create object-oriented simulations—maybe a new idea, but it was still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim’s eligibility.

On the issue of whether the district court properly denied Simio leave to amend its complaint, the Federal Circuit affirmed the court’s futility-based denial.  The Federal Circuit further found that nothing in the Complaint prevented resolving eligibility as a matter of law.  While Simio  argued that the district court erred by determining ineligibility without first conducting claim construction, Simio failed to explain how it might benefit from any particular term’s construction under an Alice § 101 analysis.

The Federal Circuit also affirmed because Simio failed to show good cause for seeking to leave to amend only after the scheduling order’s deadline.

In Illumina, Inc. v. Ariosa Diagnostics, Inc., [2019-1419] (August 3, 2020), the Federal Circuit modified the Court’s original opinion on March 17, 2020.  The Federal Circuit reversed the district court’s determination that claims 1–2, 4–5, and 9–10 of U.S. Patent 9,580,751 and claims 1–2 and 10–14 of U.S. Patent 9,738,931 were invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.

In XY, LLC v. Trans Ova Genetics, LC, [2019-1789] (July 31, 2020), the Federal Circuit reversed the district court’s judgment that the asserted claims of RE46559 are ineligible under §101, and vacate the district court’s determination that claim-preclusion judgment, and remand for further proceedings certain claims of U.S. Patent Nos. 6,732,422, 7,723,116, and 8,652,769 were claim-precluded based on a prior lawsuit filed by XY against Trans Ova.

The ‘559 patent is directed to a method of operating a flow cytometry apparatus with at least n detectors to analyze at least two populations of particles in the same sample.  At Alice step two the district court found that the claims were directed to the mathematical equation that permits rotating multi-dimensional data.  At Alice step two, the district court held that the asserted claims lacked an inventive concept because XY admitted that each claim element was known in the art.

Beginning its analysis with Alice step one, the Federal Circuit concluded that the district court erred when it held that the claims are directed to the mathematical equation that permits rotating multi-dimensional data.  The Federal Circuit found that the claims are directed to a purportedly improved method of operating a flow cytometry apparatus.  The Federal Circuit found the asserted ’559 patent claims were analogous to the claims at issue in Diehr and Thales.  Like the claims in Diehr, the asserted claims “describe in detail a step-by-step method” for accomplishing a physical process.  Like the claims in Thales, the claims are directed to a method in which at least two sensors or detectors gather data about an object before mathematical operations are applied to the gathered data to generate more accurate information about the object than was previously possible in the art.  Having concluded that the asserted claims of the ’559 patent are not directed to an abstract idea at Alice step one, the Federal Circuit did not reach Alice step two.

Turning to the issue of claim preclusion, the Federal Circuit said that the parties’ only dispute concerned whether the district court properly concluded that XY’s 2012 and 2016 lawsuits present the same cause of action. XY argues that the district court erred by failing to compare the currently asserted patent claims to the previously asserted patent claims to determine whether the causes of action in the two lawsuits are essentially the same, and the Federal Circuit agreed.  The district court’s holding was based solely on the fact that the earlier-asserted patents and the later-asserted patents shared a common specification and were continuations of, and terminally-disclaimed to, the same parent patent.  The Federal Circuit concluded that the district court erred in its claim-preclusion analysis by failing to compare the scope of the patent claims asserted in the 2012 lawsuit with the scope of the patent claims asserted in the 2016 lawsuit, and vacated and remanded the case.

In American Axle & Manufacturing, Inc., v. Neapco Holdings LLC, [2018-1763] (July 31, 2020), the Federal Circuit modified and reissued its October 3, 2019 opinion. In American Axle & Manufacturing, Inc., v. Neapco Holdings LLC, [2018-1763] (July 31, 2020). On petition for rehearing en banc, the Federal Circuit denied rehearing en banc.  DYK, wrote a concurrence, joined by WALLACH and TARANTO.  CHEN, also wrote a concurrence, joined by WALLACH.  NEWMAN wrote a dissent, joined by MOORE, O’MALLEY, REYNA, and STOLL.  STOLL wrote a dissent, joined by NEWMAN, MOORE, O’MALLEY, and REYNA. O’MALLEY wrote a dissent joined by NEWMAN, MOORE, and STOLL. LOURIE, dissented without opinion.

In Uniloc USA, Inc. v. LG Electronics USA, Inc., [2019-1835] (April 20, 2020), the Federal Circuit reversed and remanded the district court’s 12(b)(6) dismissal of Uniloc’s patent infringement suit on the grounds that the claims of U.S. Patent No. 6,993,049 were directed to unpatentable subject matter.

The ’049 patent is directed to a communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or key-board). In conventional systems, such as bluetooth networks, two devices that share a common communication channel form ad hoc networks known as “piconets.” Joining a piconet requires the completion of two sets of procedures, namely an “inquiry” procedure and a “page” procedure. The inquiry procedure allows a primary station to identify secondary stations and it allows secondary stations to issue a request to join the piconet. The page procedure in turn allows a primary station to invite secondary stations to join the piconet. Together, it can take several tens of seconds to complete the inquiry and page procedures so that a device joins a piconet and is able to transfer user input to the primary station. Once a piconet is formed, the primary station “polls” secondary stations to determine whether they have data to share over the communication channel.

Because many secondary stations are battery-operated, secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power. A secondary station in parked mode remains synchronized with the primary station, but it must be polled before it can leave park mode and actively communicate with the primary station. In conventional systems, primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit. Therefore, under the conventional polling process, a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.

The district court held that the asserted claims are directed to the abstract idea of “additional polling in a wireless communication system,” analogizing the asserted claims to ineligible data manipulation claims in Two-Way Media Ltd. v. Comcast Cable Communications and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.

The Federal Circuit noted that In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool, and observed that it has routinely held software claims patent eligible under Alice step one when they are directed to improvements to the functionality of a computer or network platform itself. The Federal Circuit held that in accordance with its precedent such as DDR Holdings, Enfish, Visual Memory, and Ancora Technologies, and Data Engine, that the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems. The Federal Circuit said that the claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages. Therefore, like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to “overcome a problem specifically arising in the realm of computer networks.”

The Federal Circuit rejected appellee’s argument that the claims weren’t sufficiently directed to the improvement, The Federal Circuit said that the claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, the Federal Circuit said, they are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station, and this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.

The Federal Circuit said that the claimed invention’s compatibility with conventional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components. The Federal Circuit said that to hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents.

In In re Rudy, [2019-2301] (April 24, 2020), the Federal Circuit affirmed the PTAB decision that claims of U.S. patent application Serial No. 07/425,360 entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods,” were directed to subject matter ineligible for patenting under 35 U.S.C. § 101. As claimed, the user observes the clarity of water to determine whether the water is “clear, stained, or muddy,” measures light transmittance at a depth in the water where a fishing hook is to be placed, and selects a colored or colorless fishing hook based on the clarity and light transmittance of the water, in accordance with a chart.

Mr. Rudy originally filed the ’360 application on October 21, 1989, and it has undergone a lengthy prosecution, including numerous amendments and petitions, four Board appeals, and a previous trip to the Federal Circuit.

The Board’s reasoning and conclusion were fully in accord with the relevant caselaw. Applying the Supreme Court’s two-step Alice/Mayo framework, The Federal Circuit concluded, as the Board did, that the claim is directed to the abstract idea of selecting a fishing hook based on observed water conditions. The Federal Circuit said that the claims require nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions.

Mr. Rudy’s argument that fishing was a practical technological field was irrelevant to the fact that the claims at issue were ineligible. While Mr. Rudy further argued that determining the light transmittance with the accuracy could not be done mentally, the Federal Circuit found that the plain language of the claims encompasses mental determination. The Federal Circuit also rejected Mr. Rudy’s attempt to invoke the machine or transformation test, finding that the claims do not actually recite or require the purported transformation that Mr. Rudy relies upon.

Turning to step two of the Alice/Mayo inquiry, the Federal Circuit said the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the color of the hook to be used) are each themselves abstract, being mental processes akin to data collection or analysis. Considered as an ordered combination, these three steps merely repeat the abstract idea of selecting a fishing hook based on observed water conditions. The Federal Circuit said that the transformation of an abstract idea into a patent-eligible claim requires more than simply stating the abstract idea while adding the words “apply it.”

The Federal Circuit concluded that the claims were directed to ineligible subject matter.

In Cardionet, LLC v. Infobionic, Inc., [2019-1149] (April 17, 2020), the Federal Circuit reversed the dismissal of CardioNet’s complaint for infringement of U.S. Patent No. 7,941,207 on the ground that it claims ineligible under 35 U.S.C. § 101.

At step one of the Alice/Mayo inquiry, 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. 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 did not identify improvements to any particular computerized technology.

The Federal Circuit began its analysis with Alice step one, and looked to whether the claims focused 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 Federal Circuit concluded that the asserted claims of the ’207 patent were directed to patent-eligible subject matter, saying that 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.

The Federal Circuit agreed that the claims of the ’207 patent are akin to claims it had previously determined are directed to technological improvements, including in Visual Memory LLC v. NVIDIA, in McRO,.

The Federal Circuit said that 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.

Because it concluded 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.

In Illumina, Inc., v. Ariosa Diagnostics, Inc., [2019-1419] (March 17, 2020) the Federal Circuit reversed the district court’s determination that claims of U.S. Patent Nos. 9,580,751 and 9,738,931 were invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.

Illumina’s related U.S. Patent 6,258,540, which claimed a method for detecting the small fraction of paternally inherited cell-free fetal DNA in the plasma and serum of a pregnant woman, were famously held invalid under 35 U.S.C. § 101 back in 2015 because they were directed to “matter that is naturally occurring”—i.e., the natural phenomenon that cell-free fetal DNA exists in maternal blood.  The ‘751 and ‘931 patents presently at issue were based upon the “surprising” discovery that the majority of the circulatory extracellular fetal DNA has a relatively small size of approximately 500 base pairs or less, which meant that fetal DNA could be amplified by separating extracellular DNA fragments which are smaller than approximately 500 base pairs.

The Federal Circuit noted that this was not a diagnostic invention, or a treatment invention, but a method of preparation invention, and applied the two step Alice/Mayo test.  At Step 1, the Federal Circuit said it was undisputed that the inventors of the ’751 and ’931 patents discovered a natural phenomenon. But at step one of the Alice/Mayo test, “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is ‘directed to.’”   After noting the parties difficulty in identifying the natural phenomenon involved, the Federal Circuit identified the natural phenomenon: that cell-free fetal DNA tends to be shorter than cell-free maternal DNA in a mother’s bloodstream. Turning to the crucial question of whether the claims are “directed to” that natural phenomenon, the Federal Circuit concluded that the claims are not directed to that natural phenomenon but rather to a patent-eligible method that utilizes it.

The Federal Circuit explained the claims in this case are directed to methods for pre-paring a fraction of cell-free DNA that is enriched in fetal DNA. The methods include specific process steps—size dis-criminating and selectively removing DNA fragments that are above a specified size threshold—to increase the relative amount of fetal DNA as compared to maternal DNA in the sample.  These process steps change 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.

Roche insisted that the claims in this case are no more eligible than the claims at issue in Ariosa, but the Federal Circuit disagreed, noting that in Ariosa, the relevant independent claims were directed to a method “for detecting a paternally inherited nucleic acid” or a method “for performing a prenatal diagnosis,” and the only operative steps in the claims were “amplifying” (i.e., making more of) the cell-free fetal DNA and then “detecting [it],” “subjecting [it] . . . to a test,” or “performing nucleic acid analysis on [it] to detect [it].” The claims were ineligible because, like the invalid diagnostic claims at issue in Mayo, Athena, and Cleveland Clinic, they were directed to detecting a natural phenomenon.

This case shows the importance of how the invention is characterized to the 101 analysis