More on Patent Eligibility under Alice

By Barry R. Lewin

We have reported on developments regarding Alice v. CLS Bank and later cases in the past as these cases can be used toward business method patent applications. As background, in Alice, the Supreme Court held that mere abstract ideas, mathematical algorithms, natural phenomena, and mental processes are not eligible for patent protection without “significantly more” or, as has been interpreted, something truly inventive.

Since Alice, courts have allowed some business method patents, such as when a novel architecture is used or when the problem being solved and its solution both require use of the internet or computer technology. But more often than not, patent applications have been disallowed at the Patent Office or invalidated by a court, usually when the claims are determined not to include the now requisite “significantly more.” While we have been successful in obtaining patent protection for business methods for some clients, the success is often a result of a robust specification.

A recent case, directed to a method for measuring body temperature provides new guidance as to when an invention may be patentable. In Exergen Corp. v. Kaz USA (Docket 2016-2315, Fed. Cir. March 8, 2018), the patent holder’s claims included a means for measuring human body temperature superficially at the temporal artery. In layman’s terms, a scanner is placed on the side of a person’s forehead to measure body temperature. The scanner searches for a peak reading, thereby locating the temporal artery, and then takes several readings per second using an algorithm to distinguish body temperature from skin temperature. Importantly, the claims include both a natural phenomenon (body temperature) and an algorithm, two members of the group of topics “not eligible” for patent protection.

At the Federal Circuit, in a split decision, the Court held that, although body temperature may itself be a natural phenomenon, the measurement method was not conventional and not well understood, and therefore had “significantly more.” In the patent, the inventor determined and algorithmically used a coefficient which describes “the relationship between temporal-arterial temperature and core body temperature” and used the coefficient in what otherwise was “an unconventional method of temperature measurement.” This novel approach was deemed an inventive concept. Although the case was decided against the patent holder on other grounds, the explicit description of patentability provides new additional positive guidance relative to Alice.

Inventors can use this case to their advantage so long as they can identify the inventiveness in their approach, even if they are also using a natural phenomenon, and algorithm, or both. It is important to include such information in the Specification and make sure the inventive concept(s) permeate the resultant claims.