The Federal Circuit continued its stringent (if misguided) application of the scope of subject matter eligibility by invalidating claims asserted in CardioNet, LLC v. InfoBionic, Inc.

The case arose over InfoBionic's alleged infringement of CardioNet's U.S. Patent No. 7,099,715; claims 1, 11, and 20 are illustrative:

1.  A machine-implemented method comprising:
    identifying heart beats in a sensed cardiac signal;
    activating a frequency domain T wave filter, used in said identifying heart beats, in response to a message from a monitoring station generated at least in part based upon discovery of a predetermined characteristic in the sensed cardiac signal; and
    outputting information corresponding to the identified heart beats to a communications channel of a distributed cardiac activity monitoring system.

11.  A distributed cardiac activity monitoring system comprising:
    a monitoring apparatus including a communications interface, a real-time QRS detector, a frequency domain T wave filter, and a selector that activates the T wave filter with respect to the real-time QRS detector in response to a message, wherein the activated frequency domain T wave filter preprocesses a cardiac signal provided to the realtime QRS detector; and
    a monitoring station that communicatively couples with the monitoring apparatus via the communications interface and transmits the message to the monitoring apparatus to activate the frequency do-main T wave filter based at least in part upon a predetermined criteria.

20.  A cardiac monitoring apparatus comprising:
    a communications interface;
    a real-time heart beat detector;
    a frequency domain T wave filter; and
    a selector that activates the frequency domain T wave filter with respect to the real-time heart beat detector in response to a message, wherein the activated frequency domain T wave filter preprocesses a cardiac signal provided to the real-time heart beat detector.

The District Court granted summary judgment of non-infringement but held the claims not to be invalid under 35 U.S.C. § 101 for failure to recite eligible subject matter.  Both parties appealed.  

The Federal Circuit vacated the District Court's non-infringement judgment and remanded for entry of judgment that the '715 patent claims were invalid on subject matter eligibility grounds, in an opinion by Judge Lourie, joined by Judges Dyk and O'Malley.  The Court applied the Supreme Court's Mayo/Alice test (as it has grown under the Federal Circuit; see Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–73 (2012)) in reaching its invalidity conclusion.  The opinion sets forth the District Court's reasoning that, while in Step 1 of the Mayo/Alice test claim 20 is "directed to" an abstract idea ("filtering raw cardiogram data to optimize its output"), under Step 2 the claim recites "an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter."  The basis for this conclusion is that the claim is "tied to a machine" and thus satisfies the "machine or transformation" test under Bilski v. Kappos.  The Court agrees with regard to Step 1 reciting an abstract idea, which the Court characterizes as "the abstract idea of filtering patient heartbeat signals to increase accuracy."  This, "at bottom" according to the Court "requires only basic mathematical calculations, such as 'de-compos[ing] a T wave into its constituent frequencies and multipl[ying] them by a filter frequency response.'"  In this analysis the Court goes beyond what is claimed (an apparatus) and focuses on how the apparatus achieves its aims (thus avoiding the question of whether this is how the mathematical formula is applied (which was sufficient under Diamond v. Diehr to render a method claim patent-eligible), reminiscent of the Court's troubling type of reasoning in American Axle & Mfg. v. Neapco Holdings LLC.  The opinion, applying precedent across disciplines denigrates the inventiveness of the improvement in the art by cherry-picking Justice Thomas's statement in Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013), that "such calculations, even if '[g]roundbreaking,' are still directed to an abstract idea."

The opinion illustrates how the Court has gone astray in addressing CardioNet's additional arguments.  For example, to the argument that the apparatus uses the mathematical formula to achieve an improvement in an ECG that does not mistake T waves for R waves the opinion asserts "[t]o qualify as 'a patent-eligible improvement,' the invention must be directed to a specific improvement in the computer's functionality, not simply to use of the computer 'as a tool' to implement an abstract idea."  Of course, what is a computer except a tool; if the computer was just used to produce mathematical solutions the Court's rationale may have made some sense.  But the Court's reasoning ignores that the mathematical formula is used to produce an improved ECG, which certainly seems like a desirable, inventive, patent-eligible technical achievement (not to mention a benefit for patients whose physicians can rely on more accurate ECGs).

The Court is on firmer ground (albeit one more properly sounding in indefiniteness rather than ineligibility) when it critiques the claim for not reciting when and how the T wave filter is activated (which apparently is the result of determination by an operator, e.g., in claim 1: "activating a frequency domain T wave filter, used in said identifying heart beats, in response to a message from a monitoring station generated at least in part based upon discovery of a predetermined characteristic in the sensed cardiac signal").

The true colors of the determination of ineligibility are revealed in the opinion's discussion distinguishing claims here from the claims held patent eligible in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020).  The distinction, sounding in novelty rather than ineligibility, is that "[i]n that case . . . there was no intrinsic evidence that the claimed technique had ever been used" whereas here "InfoBionic points to evidence that the use of a filter to perform mathematical functions was not a new activity."

Turning to Alice Step 2, the Court dismissed CardioNet's argument that the T wave filter was "innovative" (i.e., a frank novelty argument) based on disclosure in the '715 specification seemingly to the contrary (but nonetheless engrafting the eligibility argument into another species of novelty arguments without the need for a proper novelty analysis).  The speciousness of the Court's rationale is illustrated by the conclusion that "'[a] claim for a new abstract idea,' here, a mathematical calculation, 'is still an abstract idea'" citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (not a case involving similar subject matter).  Once again patentee's arguments were thwarted by statements in their own specification, wherein "the specification explains that the other claimed components are conventional" (such statements being fatal under the Court's analysis that eschews considering claims as a whole, in contravention to  Diamond v Diehr).  And while the Supreme Court validated the machine or transformation test (while insisting it was not the exclusive test), by now the Federal Circuit appears content to ignore that precedent as well, in favor of their determinations that "not all 'transformations or machine implementations infuse an otherwise ineligible claim with an "inventive concept,"'" citing Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) and relying on the Supreme Court's holding that the test is not dispositive.  The opinion further states that:

Here, although claim 20 is technically tied to a machine (a cardiac apparatus) its ultimate focus is to "preprocess[] a cardiac signal" using a "T wave filter," which, as explained above, is an abstract idea.

Under standards like "ultimate focus" and "inventive concept," claims to almost anything are capable of being invalidated on subject matter eligibility grounds (and indeed are being invalidated; see Yu v. Apple).

There was a time, when the expectations of the Federal Circuit were higher with regard to the Court's mandate from Congress concerning patent law and the Court's purported expertise, that a decision like this one would have produced confusion, chagrin, or outrage with how the Court applied dubious Supreme Court decisions on subject matter eligibility in invalidating the asserted claims.  Nowadays, after almost a decade (the lost decade?) of the Court's fractured subject matter eligibility jurisprudence that has spread like a stain to encompass almost every class of subject matter possible, the only emotions that arise are sadness; perhaps with the passage of time this will evolve into Elvis Costello's aphorism "I used to be disgusted/Now I try to stay amused."  But not yet.

CardioNet, LLC v. InfoBionic, Inc. (Fed. Cir. 2021)
Nonprecedential disposition
Panel: Circuit Judges Lourie, Dyk, and O'Malley
Opinion by Circuit Judge Lourie