The Battle Over Biotechnology Inventions Part IV: Conclusion by Russell Nugent | Sponsored Insights – Greater Wilmington Business Journal
After Rapid Litigation Management, the Federal Circuit issued two more cases under 35 U.S.C. § 101 that contribute heavily to this discussion[1].
In both of these cases, the Court decided the patents passed the U.S. Supreme Court’s test in Alice Corp. The first was Exergen Corp. v. Kaz USA, Inc[2] (”Exergen”). In March of 2018, the Federal Circuit examined claims directed to a body temperature detector and methods of detecting human body temperature. Exergen sold a body temperature detector that calculated core body temperature using measurements taken directly above the superficial temporal artery.
Both parties agreed that the claims were directed to a law of nature, i.e. the mathematical relationship between ambient air temperature, the temperature of the skin above the superficial temporal artery and core body temperature. The dispute was over whether the claims recited more than well-understood, routine and conventional steps applying the natural law.
The Federal Circuit Court decided the steps in the patent’s claims were patent eligible even though they were already known in the prior art[3]. The Court elaborated by saying that something is not routine and conventional just because it is known in the prior art as there are very obscure references that qualify as prior art. In addition, earlier cases decided that a new combination of steps that are already known in the field can be patent eligible.
The Court went on to say that that even though the patent claims were directed to the measurement of a natural phenomenon, they used an unconventional method to measure it[4]. The Court distinguished prior cases, such as Ariosa Diagnostics, Inc. v. Sequenom, Inc. (“Ariosa”) and Mayo Collaborative Servs. v. Prometheus Labs., Inc. (“Mayo”), in which courts invalidated the patent claims by pointing out there was no dispute in those cases about whether the steps recited in the claims were routine or well-known.
