Argument Recap

Last week the Federal Circuit heard oral arguments during its October sitting in Dallas-Ft. Worth and Washington DC. Here is a short recap of Cardionet, LLC v. InfoBionic, Inc., one of the argued cases we’re following, which involves the doctrine of patent eligibility.

Ching-Lee Fukuda of Sidley Austin argued on behalf of Cardionet, L.L.C. As previewed on this blog, this case presents the question of whether an improved cardiac monitoring device is ineligible for patenting under 35 U.S.C. § 101. Fukuda argued that the district court did not take into account any evidence when determining that the claims were directed to an abstract idea and lacked an inventive concept. Fukuda argued that the inventive concept of the claims is the improved accuracy of determining the existence of “atrib flutter” as it relates to premature ventricular beats. In response to multiple questions about whether this was a process that doctors have used for years, thus rendering the claims ineligible for patent protection, Fukuda argued that no such evidence existed in the record.

Gabriel K. Bell of Latham & Watkins LLP argued on behalf of InfoBionic, Inc. In response to a question about whether the ability to determine whether someone has a heart condition with more accuracy is an inventive concept, Bell responded by describing the claims as basic steps of collecting, analyzing, and presenting data. Bell argued that opposing counsel admitted in their argument that doctors can identify premature ventricular beats by looking at an EKG, a way of collecting and analyzing data. Finally, Bell responded to a question about whether it would be better to handle this dispute with a complete record by indicating that the record itself does not even matter. Bell argued that if this is an abstract concept, it does not matter whether it is brilliant, innovative, or completely new.

In her rebuttal, Fukuda argued that the claims are directed to a thing, a cardiac monitoring device, that was not previously known rather than an abstract idea.

This case highlights the recent application of patent eligibility doctrine to patent claims in traditional areas long thought to be eligible for patenting, here to patent claims to a medical device. If it is true that the claims cover nothing more than a device using a known process, one has to wonder why the district court did not utilize patent law’s novelty or non-obviousness doctrines to invalidate the claims. On the other hand, if the claims merely describe collecting, analyzing, and presenting data without any detailed procedure for completing any of these steps, the problem would traditionally have been patent law’s enablement or written description requirement. Regardless, given the district court’s reasoning, Judges Dyk, Plager, and Stoll (who heard the oral argument) will have to constrain their analysis to the patent eligibility doctrine. As a result—and particularly if the court affirms the judgment of invalidity—this case, like the recent decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC invaliding claims to an improvement in drive line propeller shafts used in cars, will represent another signpost heralding the extensive reach and impact of the current patent eligibility doctrine.