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Federal Circuit: A Patent That Performs Computation Is Not Abstract, Is Patentable

In a de novo review of the claims under the Alice framework for determining patent subject matter eligibility in CardioNet, LLC v. Infobionic, Inc.the U.S. Court of Appeals for the Federal Circuit reversed a District Court’s determination that the claims were directed to an abstract idea. 

Ultimately, the Federal Circuit agreed with CardioNet’s argument that the present decision is similar to the court’s holding in Visual Memory LLC v. NVIDIA Corp., where 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” was determined to constitute patent eligible subject matter.

CardioNet’s U.S. Patent 7,941,207 is directed to “a device for detecting and reporting the presence of atrial fibrillation or atrial flutter in a patient.” By monitoring and processing a time-elapsed EKG, CardioNet’s claimed invention analyzes beat-to-beat variations to determine whether a patient is experiencing atrial variations and to alert staff. 

An accused infringer, InfoBionic, argued at the district court level that the claims are invalid as being directed to unpatentable subject matter. The District Court agreed with the defendant concluding 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,’” rejecting 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.”

Upon review, the Federal Circuit overruled the District Court, reasoning that the claims are directed to eligible subject matter under step one of the Alice two-step analysis framework. Specifically, it determined that the claims “focus on a specific means or method that improves the relevant technology,” but are not “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”

In support of this determination, the court pointed to the benefits offered by the patented device over other solutions, as laid out in the detailed description, in that “the device more accurately detects the occurrence of atrial fibrillation and atrial flutter – as distinct from V-TACH [ventricular tachycardia] and other arrhythmias – and allows for more reliable and immediate treatment of these two medical conditions.” It cited the device’s stated “increased clinical significance” in delivering fewer false positive or false negative indications. 

In reversing, the Federal Circuit pointed to the lower court’s flawed determination that “the claims are directed to automating known techniques” as being “at the heart of” its error. Reasoning that neither the written description, nor the record as a whole, supported the assertion that “doctors performed the same techniques as the claimed device in diagnosing atrial fibrillation or atrial flutter.” Moreover, the court found it “difficult to fathom,” for example, “how doctors mentally or manually used ‘logic to identify the relevance of the variability [in the beat-to-beat timing] using a non-linear function of a beat-to-beat interval,’” as required by one of the claims at issue.

Separately, the court underlined the importance of considering the recited advantages of a given device by pointing out that the district court erred in dismissing the numerous proffered advantages of the patented device. “Here, there is no record evidence,” the Federal Circuit reasoned, “undermining the statements in the written description concerning the benefits of the claimed device.” 

As a final matter, the court cautioned against “analogizing the ’207 patent claims to certain ineligible ‘computer-implemented claims for collecting and analyzing data to find specific events,’” as the district court did. The Federal Circuit highlighted that “[g]eneralizing 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.” 

© 2020 BARNES & THORNBURG LLPNational Law Review, Volume X, Number 113

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About this Author

 Irina Sullivan BTLaw Chicago IP Law
Associate

An electrical engineer with hands-on work experience, Irina focuses her practice on preparing and prosecuting patent applications for electrical hardware and software systems. This experience allows her to handle invention disclosures and provide support and guidance through virtually all stages of the application drafting and prosecution process.

In the course of her practice, Irina has prepared and prosecuted over 100 patent applications across a variety of areas, including digital signal processing, computational and numerical models, machine learning, encryption and identity...

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Scott M. Simmonds Intellectual Property Attorney barnes & Thornburg Law Firm Indianapolis
Partner

Intellectual property attorney Scott Simmonds advises on IP acquisition and strategy. He works with business clients to identify the strengths, weaknesses and opportunities of their portfolios, navigate the shifting legal landscape to create significant and enforceable properties, and maximize revenue-generating initiatives designed to monetize valuable IP.

As a leader, Scott administers the firm’s patent practice and serves on the firm’s management committee. As a practitioner, Scott prepares and prosecutes patent applications through the U.S. Patent and Trademark Office (USPTO) and counsels clients on the protection and development of IP. Scott is known for his experience in creating the strategies his clients need to succeed in their respective markets. Having been involved in patent portfolio development and management for a wide range of businesses, Scott knows how to tap the right resources for those he serves.

Scott works directly with inventors, executives and in-house counsel to cultivate the novel and often highly specific differentiators of a given technology or innovation in an effort to increase the value of his client’s patent portfolio. He is also regularly involved in negotiating licensing agreements, conducting freedom to operate analyses, and providing due diligence support for mergers and acquisitions. Clients and colleagues alike appreciate Scott’s ability to frame their critical IP assets within their bigger picture objectives.

Scott joined the firm after spending more than a decade as an engineer working in the design and manufacture of medical devices and patient-handling equipment. As a result, he offers multidimensional business experience that ranges from planning and development to budgeting and staffing. His business experience and education help him to understand client concerns from their distinct perspective.

He has experience with technologies such as:

  • Hospital beds and patient-handling equipment

  • Controls systems for electro-mechanical systems

  • Refrigeration systems and controls

  • Aircraft engines

  • Concrete working equipment

  • Dental appliances

  • Surgical support systems

  • Neural networks

  • Hydraulic transmissions

Scott focuses on providing the legal solutions that make sense for his client’s specific business and operations. He is at his best when supporting creativity, problem-solving and helping his clients succeed.

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