Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
In Chudik the Circuit rules that no substantial evidence supports the Board’s determination of anticipation since the ruling is based on a significant and impermissible modification of the prior art apparatus. We somehow missed Thales, a precedential Alice decision of a couple of weeks ago, finding that claims asserted against a helmet-mounted display system in the F-35 fighter do in fact recite patentable subject matter. Any precedential Circuit cases decided tomorrow will be included in next week’s report.
Thanks to my colleague Mike Cofield for his help with this week’s report.
In re Chudik, Fed. Cir. Case 2016-1817 (March 27, 2017)
The Circuit rules that substantial evidence does not support the Board’s determination that the claims at issue, directed to an implant used in rotator cuff surgery, are anticipated by two separate references. Specifically, the panel holds that prior art that must be distorted from its obvious design does not anticipate.
The surgery described in Chudik’s application involves two main steps. First, the surgeon removes “a minimal amount of bone from the peripheral surface of the glenoid.” Second, the surgeon places an implant in the formed cavity. The first reference (Rambert) discloses a glenoid implant with a so-called shell element 27b in contact with an anchoring element 27a, which in turn contacts the glenoid cavity 6.
Rambert’s Fig. 2
The second reference (Bouttens) shows a protruding surface 11 facing away from the glenoid cavity and toward the humerus, with screws on the opposite side of the protruding surface attaching the implant to the glenoid region.
Bouttens’s Fig. 1
According to the Board, claim 1 requires only that the recited surfaces be “arranged” for engagement, not that they actually do engage. As Rambert’s surfaces can be arranged to engage the specified glenoid regions, claim 1 is anticipated. As for claim 40, Bouttens’s surface 11 is structurally capable of engaging a glenoid cavity.
The panel disagrees, noting that the “arranged to engage” language could imply that the protruding surface on the flat side need not always actually engage the glenoid cavity surface. However, it must be at least capable of doing so. Here, Rambert’s element 27b cannot be “arranged to engage” the glenoid cavity surface without “tearing the invention apart” by removing element 27a. Prior art that “must be distorted from its obvious design” does not anticipate a new invention. Therefore, substantial evidence does not support the Board’s finding of anticipation of claim 1 based on Rambert.
Claim 40 requires “a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.” Mr. Chudik asks: “If the Bouttens implant’s ‘protruding surface’ is faced about, turned 180 degrees, where does the Board propose to fasten it in a person’s shoulder?” The Board’s reasoning only makes sense if the user rotates Bouttens 180 degrees, thereby rendering the protruding surface 11 capable of engaging the glenoid cavity. Rotating Bouttens so that the protruding surface faces the glenoid cavity would require relocating the screws for Bouttens to remain operable. This endeavor would constitute a significant and impermissible modification.
This ruling, in combination with its decision two weeks ago in Nidec Motor v. Zhongshan Broad Ocean Motor, shows that the Circuit is not reluctant to reverse Board determinations of anticipation, even under the deferential “substantial evidence to support” standard of review.
Thales Visionix Inc. v. U.S., Fed. Cir. Case 2015-5150 (March 8, 2017)
The Circuit reverses a Court of Federal Claims holding that all claims of Thales’ patent are directed to the abstract idea of mathematical equations. Specifically, the Circuit finds that the claims utilize the mathematical equations for the determination, but are not directed to these mathematical equations. Because the claims survive Alice step one, there is no need to proceed to Alice step two.
The ’159 patent discloses an internal tracking system for tracking the motion of an object relative to a moving reference frame. Inertial sensors (e.g., accelerometers and gyroscopes) measure the specific forces associated with changes in a sensor’s position and orientation relative to a known starting position. The ’159 patent recognized that systems using these inertial sensors to measure changes with respect to the earth produced inconsistent position information between inertial sensors of the object (e.g., the helmet) and inertial sensors of the platform (e.g., the vehicle) when the moving platform accelerated or turned. In the disclosed system, the platform inertial sensors directly measure the gravitational field in the platform frame, and the object inertial sensors then calculate position information relative to the frame of the moving platform. The two claims at issue recite:
1. A system for tracking the motion of an object relative to a moving reference frame, comprising:
a first inertial sensor mounted on the tracked object;
a second inertial sensor mounted on the moving reference frame; and
an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.
22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.
In summarizing the critical question to be answered in step one, the panel cites to Mayo, stating: “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” The Circuit disagrees with the Claims Court, which held that the claims are directed to the abstract idea of using “mathematical equations for determining the relative position of a moving object to a moving reference frame.”
Regarding step one, the opinion quotes the 2016 Rapid Litigation case: “it is not enough to merely identify a patent-ineligible concept underlying the claim: we must determine whether that patent-ineligible concept is what the claim is ‘directed to.’” While the claims utilize mathematical equations to determine the orientation of a tracked object, the equations serve only to tabulate the position and orientation information in this configuration. The claims are directed to methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame, which is not an abstract idea.
This ruling emphasizes the distinction made by the Supreme Court in Diamond v. Diehr and Alice between, on the one hand, claims that merely involve an abstract concept, and claims that are directed to the abstract concept, on the other.