This decision, Appeal No. 2019-1149 (Fed. Cir. April 17th 2020) should have required about 13 pages and could have ended after the first paragraph under Section A. Instead, a split panel required a 23 page majority decision and a 10 page dissent, largely discussing whether or not extrinsic evidence that the claimed invention has been in “longstanding practice” can be used to establish that the claimed invention is directed to an abstract idea. The majority argued that intrinsic evidence was sufficient in this case, but, as the dissent argued “the majority [improperly] concludes that “there is no basis for requiring, as a matter of law, consideration of the prior art in the step one [Alice/Mayo] analysis in every case….Limiting the use of extrinsic evidence to establish that a practice is longstanding would be inconsistent with authority.”

The underlying question was whether or not the district court properly found that claims to an improved cardiac monitoring device were patent ineligible as directed to an abstract idea. The device was basically a souped-up electrocardiogram. It detects:

“beat-to-beat timing of cardiac activity, detects premature ventricular beats, and determines the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter, taking into account the variability in the beat-to-beat timing caused by premature ventricular beats identified by the device’s ventricular beat detector. In [the majorities] view, the claims “focus on a specific means or method that improves” cardiac monitoring technology; they are not ‘directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.’” Slip op. at 11.

The majority did not disagree with the majority, and I was planning to comment on the somewhat arcane issue raised by the dissenter, but something more interesting caught me by surprise. Foundational recent patent eligibility cases in “information technology” like Bilski and Alice shoe-horned human commercial activities like risk-hedging and the use of intermediaries in transactions into abstract ideas. Such business practices are real-world; they may be not novel or obvious, but they are not simply economic theories.

The Supreme Court in Benson had ruled that “an invention is not rendered ineligible for patent simply because it involves an abstract concept. Rather, ‘applications’ of abstract concepts ‘to a new and useful end…remain eligible for patent protection.” The Bilski and Alice decisions were not based on utility but, as the majority suggests, were based on novelty—the “new” requirement—which claims failed when there was evidence that they were directed, not to improvements, but to longstanding practices in the art.

In CardioNet, the majority gave great weight to the improvements in cardiology asserted by the patentee, and found little evidence on the record that the functions were longstanding practices, such as the information a cardiologist can obtain by just taking your pulse. This suggested a question that is difficult to answer – can patent eligible claims be directed to an invention that is both new and useful, but not an improvement in a longstanding practice.

I could only come up with one in the time allotted to create this post. Ancient people started fires by striking flint against iron pyrite, a mineral that yielded sparks when struck just so. What if a tribal inventor discovered that agate or chert worked as well as flint, but still required the same striking techniques. Now we have an invention that, while useful and novel is, in this hypothetical, not an improvement in fire-starting technology. So where did this longstanding, somewhat back-door longstanding use bar come from. It seems more appropriate to make the inquiry part of Step 2 of the Mayo/Alice test, as part of the search for the elusive inventive concept—if it belongs in the patent eligibility analysis at all.

This article was originally published on Patents4Life.com.

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