Thursday, March 08, 2018

The CAFC discusses 101 in Exergen v. Kaz

Although Exergen v. Kaz is non-precedential, it tackles a variety of issues, including 101, right to jury trial,
and damages.

Of 101,

What the parties
dispute, however, is whether the additional claimed steps
beyond calculating the temperature present a novel
technique in this computation or add an inventive concept
sufficient to transform the claims into a patent-eligible
The district court reasoned that “while the asserted
claims are based in natural phenomena,” the claims recite
additional steps which, like the claims in Diamond v.
Diehr, 450 U.S. 175 (1981), “transformed the underlying
natural laws into inventive methods and useful devices
that noninvasively and accurately detect human body
temperature.” J.A. 110, 113–14. The court noted that the
asserted claims each recite a subset of three steps: (1)
moving while laterally scanning (’685 patent claims 7, 14,
and 17; ’938 patent claims 17, 24, 33, 60, and 66); (2)
obtaining a peak temperature reading (’685 patent claim
7; ’938 patent claims 60 and 66); and (3) obtaining at least
three readings per second (’938 patent claims 17, 24, 39,
40, 46, and 49). Kaz argued both below and on appeal
that these additional elements were known in the prior
art. The district court held simply being known in the art
did not suffice to establish that the subject matter was not
eligible for patenting. The district court recognized that a
“new combination of steps in a process may be patentable
even though all the constituents of the combination were
well known and in common use before the combination
was made.” J.A. 112 (quoting Diehr, 450 U.S. at 188).


The district court’s conclusion that these claim elements
were not well-understood, routine, and conventional
is a question of fact to which we must give clear error
deference. Like indefiniteness, enablement, or obviousness,
whether a claim is directed to patentable subject
matter is a question of law based on underlying facts.
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1343 (Fed. Cir. 2016)


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