In the non-precedential decision issued in Exergen Corp. v. Kaz USA, Inc., Judge Moore considered the time and money it took to develop the invention at issue when deciding that the claims satisfy the patent eligibility requirement of 35 U.S.C. § 101. While other patent eligibility decisions make clear that an inventor’s investment will not always be relevant, Exergen offers an interesting way to evaluate whether claim elements relate to more than “well-understood, routine and conventional” activity.
The Patents At Issue
The patents at issue were Exergen’s U.S. Patent Nos. 6,292,685 and 7,787,938, directed to a “body temperature detector” and related methods. Method claim 24 of the ‘685 patent was designated as representative:
14. A method of detecting human body temperature comprising making at least three radiation readings per second while moving a radiation detector to scan across a region of skin over an artery to electronically determine a body temperature approximation, distinct from skin surface temperature.
24. The method of claim 14 wherein the artery is a temporal artery.
The district court held the claims to be patent-eligible. Kaz appealed to the Federal Circuit.
The Patent Eligibility Analysis
The non-precedential Federal Circuit decision was authored by Judge Moore and joined by Judge Bryson. Judge Hughes dissented.
The determination of patent eligibility under 35 U.S.C. § 101 involves a two-step analysis often referred to as a “Mayo/Alice analysis.” The first step involves determining whether the claims are directed to a patent-ineligible concept (e.g., a law of nature, natural phenomena, or abstract idea). If the claims are found to be directed to a patent-ineligible concept, then the second step involves determining whether the elements of the claim contain "an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347, 2357 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72, 79 (2012)).
Oftentimes, the second step of the analysis focuses on whether the elements involve well-understood, routine, and conventional activity previously engaged in by researchers in the field, which is a question of fact. In Exergen, the Federal Circuit signaled that economic factors may be relevant to this inquiry.
Time + Money = Patent Eligibility?
The district court found the claims to be based on natural phenomena, but determined that they contained additional steps which transformed the claims into inventive methods and useful devices. In particular, the district court noted that the claims recited a subset of three additional steps:
- moving while laterally scanning
- obtaining a peak temperature reading
- obtaining at least three readings per second
Kaz argued that the additional elements were known in the prior art. However, the Federal Circuit agreed with the district court, because "[s]omething is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference." As an example, the Federal Circuit noted that although an obscure reference may qualify as prior art, it would not be sufficient to establish that something is well-understood, routine, and conventional activity previously engaged in by researchers in the field.
The Federal Circuit distinguished Exergen’s claims from those at issue in Mayo and Ariosa, “where well-known, existing methods were utilized to determine the existence of a natural phenomenon.” According to the court:
This case is different. …. Following years and millions of dollars of testing and development, the inventor determined for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature and incorporated that discovery into an unconventional method of temperature measurement. As a result, the method is patent eligible, similar to the method of curing rubber held eligible in Diehr.
It does not seem unreasonable that the investment required to develop an invention might be relevant to show that it does not just rely on “well-understood, routine and conventional” technology. If the techniques truly were well-understood, routine, and conventional, it would not have been necessary for the inventor to invest substantial time and money to arrive at the invention.
It also is interesting that Judge Moore comments on the investment required to determine the “coefficient representing the relationship between temporal-arterial temperature and core body temperature,” which seems to relate more to the patent-ineligible concept than the other elements of the claims. Indeed, Judge Hughes took issue with that aspect of the majority decision in his dissent.
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