Claims of US patent US 7,058,439 in the name of ContourMed Inc was found to be patent eligible subject matter under 35 USC 101 because it falls outside of the abstract ideas in the precedent because the concept of the invention involves substantially more than mere data collection and storage and does not threaten to pre-empt the use of scanners and computer modeling in other fields.
- While the process claimed in the `439 Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components.
Broad description of the invention
The ‘439 patent claims methods and systems that claim imaging of the breast to the ultimate end of creating a breast prosthetic.
- A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising:
providing a scanning system comprising one or more imaging devices and one or more alignment markers, wherein at least one of the alignment markers comprises a tangible object, wherein the tangible object is noticeable in a scanned image and may be used to manipulate a scanned image as a reference point;
arranging at least one of the alignment markers in the middle of the body of the patient and within the field of view of at least one of the imaging devices;
determining a first set of data elements using the scanning system is based on a shape of the patient’s intact breast;
determining a first computer model of the intact breast based on the first set of data elements;
using at least one of the alignment markers in the middle of the body of the patient as a fixed reference point relative to the patient to determine alignment of the first computer model of the intact breast;
applying a reflection transformation to the first computer model of the intact breast to form a second computer model, the second computer model comprising a second set of data points that represents a mirror image of the first computer model;
determining a third set of data elements using the scanning system based on a surgical site at which the breast was at least partially removed;
determining a third computer model based on the third set of data elements; and combining the third computer model and the second computer model to form a breast prosthesis model, wherein the second computer model defines an anterior portion of the breast prosthesis model that mirrors the intact breast and the third computer model defines a posterior portion of the breast prosthesis model that is custom fit to the surgical site.
Under Section 101 of the Patent Act, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101 (2012). While the Supreme Court interprets the statutory language to “include anything under the sun that is made by man,” long-standing precedent bars the grant of a patent directed to “laws of nature, physical phenomena, or abstract ideas,” except for certain circumstances. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S. Ct. 2204 (1980). However, courts should be mindful that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
In Alice Corp. v. CLS Bank International, the Supreme Court set out a two-part test for determining whether a patent claim is directed toward ineligible subject matter. 134 S. Ct. 2347, 2355 (2014). First, the court must determine “whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. Second, if the patent is directed to a patent-ineligible concept, the court then “consider[s] the elements of each claim both individually and `as an ordered combination’ to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297-98).
Thus, the court first asks whether the claims at issue in the `439 Patent are directed to an abstract idea. ContourMed argues that the claims of the `439 Patent are directed to patent-eligible subject matter as opposed to an abstract idea because the claimed “scanning system” includes an imaging device and “expressly requires `one or more alignment markers,'” adhesive tape placed on the subject prior to imaging that aids the 3D modeling process. Dkt. 14 at 5; Dkt. 1, Ex. 1. Conversely, ABC argues that the `439 Patent is directed to an abstract idea because the patent claims the creation of a “computer model on a generic computer using data collected conventionally using a generic scanner system.” Dkt. 11 at 11. ABC further contends that claim 1 of the `439 Patent “is logically indistinguishable from the claims held invalid in Alice.” Id.
Abstract ideas generally encompass concepts like mathematical equations and business methods, though not all inventions claiming these abstract ideas are held invalid. Compare Diamond v. Diehr, 450 U.S. 175, 188, 101 S. Ct. 1048 (1981) (holding that a patent claiming a mathematical equation used to improve the process of curing rubber was abstract but still patent-eligible), with Bilski v. Kappos, 561 U.S. 593, 609, 130 S. Ct. 3218 (2010) (holding that a patent claiming a method to hedge risk in financial transactions was an invalid abstract idea). Courts preclude patent protection for inventions that merely conceptualize an abstract idea out of fear that a patent on such an idea would “pre-empt use of [the] approach in all fields, and would effectively grant a monopoly over [the] abstract idea.” Bilski, 561 U.S. at 612. In Alice, the patent at issue claimed a method of using a third party to mitigate settlement risks. 134 S. Ct. at 2356. The Court analogized this intermediated settlement to the risk-hedging patent in Bilski, reasoning that both patents conceptualize “`a fundamental economic practice long prevalent in our system of commerce.'” Id. (quoting Bilski, 561 U.S. at 611). The Court reasoned that both the Bilski patent and the patent at issue in Alice are abstract because they are drawn to “building block[s] of the modern economy.” Id. Unlike the patents at issue in Alice and Bilski, the `439 Patent does not claim a “building block of the modern economy.” Id.
The other cases used by ABC to argue that the `439 Patent is directed to an abstract idea all lack physical components, merely beginning with data collection and ending with data storage. See e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding a method of collecting data with a scanner, recognizing certain data, and storing data on a computer to be abstract); Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 56 F. Supp. 3d 813, 823 (E.D. Va. 2014) (holding a database that compiles data and reports network usage information abstract). While the process claimed in the `439 Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components. Dkt. 1, Ex. 1. The patent claims imaging of the breast to the ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in the computer modeling. Id. In determining whether an invention encompasses an abstract idea, courts caution against an approach that focuses only on physical or tangible results of an invention because it “inappropriately focuses on the result of the claimed invention rather than the invention itself.” In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009). Even taking this cautionary note into consideration, the `439 Patent still falls outside of the abstract ideas in the precedent because the concept of the invention involves substantially more than mere data collection and storage and does not threaten to pre-empt the use of scanners and computer modeling in other fields.
Therefore, the `439 Patent is not directed to an abstract idea and does not need to be examined under the second step of the Alice framework. ContourMed has shown a plausible entitlement to relief and dismissal at this stage would be improper.