Last Week in the Federal Circuit (October 25-29): Taking the Pulse of Another § 101 Decision

While there may have been no public tricks or treats from the Federal Circuit last week, the Court still managed to issue a range of precedential and non-precedential decisions. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 2

Non-precedential opinions: 9

Rule 36: 0

Longest pending case from argument: Tie between Corephotonics, Ltd. v. Apple Inc., No. 20‑1424 and Corephotonics, Ltd. v. Apple Inc., No. 20-1961 (138 days each)

Shortest (non-Rule 36) pending case from argument: Gay v. McDonough, No. 21-1226 (17 days)

Case of the week: CardioNet, LLC v. InfoBionic, Inc., No. 20-2123

Panel: Judges Lourie, Dyk, and O’Malley, with Judge Lourie writing the opinion.

You should read this case if: you have a matter involving § 101 eligibility.

This week’s case of the week involves subject matter eligibility under 35 U.S.C. § 101, which defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. District courts have grappled with implementing this section and the Supreme Court and Federal Circuit’s prior guidance in this area.

CardioNet involved patent claims directed to a heart monitoring apparatus that detects heart beats and selectively activates a filter for a particular type of wave. The district court denied the defendant’s motion for judgment on the pleadings that the asserted claims were ineligible under § 101, which the defendant appealed.

The Federal Circuit reversed under the Alice/Mayo analysis. At step 1, the Federal Circuit held that the claims were directed to the abstract idea of filtering patient heartbeat signals, which “requires only basic mathematical calculations.” Because the invention involved merely implementing that abstract filtering idea on general-purpose computer hardware, the Federal Circuit rejected the argument that the claims were directed to a specific improvement in cardiac monitoring technology. At step 2, the Federal Circuit held that the claims did not recite an inventive concept sufficient to transform the nature of the claim into patent-eligible subject matter. It noted that the patent cites references that disclose filtering particular types of waves. Additionally, the Court held that even if the filter function was innovative, it was still a claim to a mathematical calculation, which is an abstract idea.

This case is made more interesting because of its relation to an earlier Federal Circuit ruling. Last year, the Federal Circuit ruled in another § 101 challenge involving these parties that a patent claiming a system that detected different types of cardiac arrhythmias by measuring heartbeat variability was not abstract under § 101. See CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). The Federal Circuit explained here that the earlier case lacked intrinsic evidence that the claimed technique had ever been used. But in this case, “the use of a filter to perform mathematical functions was not a new activity.”