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IP Alert: Federal Circuit Continues to Grapple with Admissibility of Prior Art in Deciding § 101 Cases

April 22, 2020

On April 17, in CardioNet, LLC v. InfoBionic, Inc., the Federal Circuit held that a patent directed to an improvement in cardiac monitoring technology is directed to patentable subject matter, and there was no need to remand for consideration of the prior art. In a partial dissent, Judge Dyk, while concurring in the result, disagreed with statements in the majority opinion that were, in his opinion, dicta, and were likely to “sow confusion” regarding admissibility of prior art in a section 101 analysis. This case is yet another in a string of decisions on whether patents claim patentable subject matter under 35 U.S.C. § 101.

Plaintiffs CardioNet and Braemar Manufacturing (collectively “CardioNet”) brought a patent infringement action in the District of Massachusetts against InfoBionic for infringement of CardioNet’s U.S. Patent No. 7,941,207. The ’207 patent is directed to cardiac monitoring systems for detecting and distinguishing atrial fibrillation and atrial flutter from other forms of cardiac arrythmia. InfoBionic moved to dismiss for failure to state a claim pursuant to Rule 12(b)(6), arguing that the asserted claims of the ’207 patent were directed to patent-ineligible subject matter under section 101. The district court granted this motion pursuant to the Supreme Court decision in Alice Corp. v. CLS Bank Int’l and its progeny, finding that the patent claims were not directed to patentable subject matter under section 101 because they were directed to an abstract idea.

On appeal, the Federal Circuit reversed. After noting that patent eligibility under section 101 is a question of law that may contain underlying issues of fact, the court held that the claims were directed to an improved cardiac monitoring device and not to an abstract idea. “In our view,” held the court, “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.’”

In reaching its decision, the court discussed the claim language and specification and found that the claims are “akin” to claims that the court has previously determined in other cases to be directed to technological improvements and not to abstract ideas. The court emphasized that it accepted as true the statements in the ’207 specification describing the advantages of the claimed technology and noted that nothing in the specification suggests that doctors were previously employing the techniques performed by the claimed device. The court stated that the district court’s error resulted from its incorrect assumption that the claims were directed to automating known techniques and assigned error to the district court’s “fact finding” to the contrary. The Federal Circuit emphasized the requirement to construe all facts and draw all inferences in favor of the non-moving party (CardioNet) in deciding a motion to dismiss under Rule 12(b)(6).

In a second part of the opinion, the court addressed the question of whether it was capable of resolving the issue of section 101 eligibility at the 12(b)(6) stage without remanding to assess the state of the art to determine whether the claims are directed to automating a practice long used by doctors. It concluded that no remand was necessary because the “Alice step one” question of whether the claims are directed to an abstract idea presents a legal question that should be answered “based on the intrinsic evidence,” i.e., without examination of the prior art. “Accordingly,” the court held, “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.” In this case, the court determined that the patentee’s assertions in the specification that the claimed invention constituted an improvement of a computer or network should be credited, and it concluded that no remand was necessary to consider evidence of prior art. The court further stated that the trial court has discretion to take judicial notice of a longstanding practice where the extrinsic evidence is “overwhelming to the point of being indisputable,” even though the court is not required to consider evidence of prior art or extrinsic evidence regarding the state of the art. The majority noted that comparison of the prior art and the patents claims is reserved “for §§ 102 and 103 purposes.”

Judge Dyk agreed with the result of reversing the dismissal of the complaint on the ground that the claims “have not been shown” to be patent ineligible under section 101, but dissented to express disagreement with the majority’s statements, which were dicta in his opinion, regarding limits on the admissibility of extrinsic evidence of the prior art and a longstanding practice regarding the asserted claims. In his opinion, binding authority does not limit the use of extrinsic evidence of prior art to determine the state of the art or a longstanding practice in a “step one” inquiry under section 101. Regarding the issue of admissibility of extrinsic evidence, Judge Dyk stated that the “language in the panel opinion is likely to sow confusion” for “the district court and the bar.”

This Federal Circuit decision is significant because it highlights the unresolved questions surrounding whether prior art is relevant and admissible in a section 101 analysis. The decision was made in the context of a motion to dismiss under Rule 12(b)(6) where the matters outside the pleadings are not normally considered and the pleadings are construed in favor of the non-movant. Thus, the decision did not have occasion to address the question of relevance and admissibility of evidence in the context of a decision on the merits (i.e., summary judgment or trial). In any case, as in other Federal Circuit decisions, the majority and dissenting opinions demonstrate that the Federal Circuit is struggling with what the rules are and should be regarding the relevance and admissibility of prior art, the state of art, and “longstanding” practices in the course of deciding whether a patent is directed to statutory subject matter under section 101, rather than deciding novelty or obviousness under sections 102 and 103.

For more information on this ruling, please contact Fitch Even partner Karl R. Fink, author of this alert.

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