In Re GALE

• Court: Court of Appeals for the Federal Circuit
• Decided: May 18, 2021
• Docket: 20-2270
• Status: Unpublished

Opinion

Case: 20-2270 Document: 32 Page: 1 Filed: 05/18/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IN RE: BRIAN GALE, Appellant ______________________

2020-2270 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 12/408,686. ______________________

Decided: May 18, 2021 ______________________

THEODORE SABETY, Sabety & Associates PLLC, New York, NY, for appellant.

MICHAEL S. FORMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Andrew Hirshfeld. Also represented by KAKOLI CAPRIHAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA YASMEEN RASHEED. ______________________

Before MOORE, TARANTO, and HUGHES, Circuit Judges. HUGHES, Circuit Judge. Brian Gale appeals a decision of the Patent Trial and Appeal Board rejecting all noncancelled claims from his pa- tent application as ineligible under 35 U.S.C. § 101. Case: 20-2270 Document: 32 Page: 2 Filed: 05/18/2021

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Because we agree with the Board that the claims are di- rected to an abstract idea and lack an inventive concept, we affirm. I Mr. Gale filed U.S. Patent Application No. 12/408,686 (the ’686 application) titled “Verification Monitor for Criti- cal Test Delivery Systems” on March 21, 2009. The ’686 ap- plication is generally directed to monitoring and assembling metadata related to critical test result delivery systems in the medical field. Ex Parte Brian Gale, 2020 WL 4345857, at *1 (P.T.A.B. July 20, 2020) (Decision) (quoting J.A. 40). The application explains that, in the medical test- ing world, timely reporting of diagnostic testing results is crucial. J.A. 40. To address this concern, the application describes a method for ensuring that reporting of diagnos- tic test information occurs consistently and continually. J.A. 41. Claim 1 is representative: 1. A method of verification monitoring of a critical test result message management system per- formed by a computer system comprised of at least one computers comprising: receiving into the computer system at least one data messages embodying a cor- responding at least one critical test result messages, said at least one data messages having an associated at least one timing data; determining by using the computer system to read from a computer data stor- age device data that represents the re- ceived at least one data messages, at least one test result message metadata corre- sponding to the received at least one mes- sage, said determined metadata describing Case: 20-2270 Document: 32 Page: 3 Filed: 05/18/2021

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at least one of a transmission time, a re- ceipt time, a retrieval time, a response time, or an interval between two times, by further using the timing data correspond- ing to the at least one data messages asso- ciated with the at least one critical test result messages; using the computer system to calculate data representing a usage pattern using the determined at least one test result mes- sage metadata; and using the computer to automatically determine a logical condition using the data representing the usage pattern, said logical condition comprising either the state of compliance or the state of non-com- pliance of the calculated usage pattern with a pre-defined usage pattern require- ment of the critical test result message management system. J.A. 33. Thus, claim 1 describes a method in which a computer system: (1) receives critical test result messages with asso- ciated timing-related metadata, (2) reads the timing-re- lated metadata, (3) calculates a usage pattern from the metadata, and (4) determines whether the calculated usage pattern is compliant by comparing it to a predetermined usage pattern requirement. The Board found that the claims of the ’686 application were ineligible under 35 U.S.C. § 101 because they were directed to an abstract idea without significantly more. De- cision, 2020 WL 4345857, at *9. Mr. Gale now appeals. Case: 20-2270 Document: 32 Page: 4 Filed: 05/18/2021

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II Patent eligibility is a question of law that may contain underlying issues of fact. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). We review patent el- igibility under 35 U.S.C. § 101 under the two-part test es- tablished by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014). “We must first determine whether the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If they are, we “con- sider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the addi- tional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo Col- laborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)). We agree with the Board that Mr. Gale’s claims are di- rected to the abstract idea of (1) collecting information (here, receiving messages and reading their metadata), (2) analyzing the information (here, calculating a usage pat- tern and determining its compliance with a predetermined usage pattern), and (3) reporting the results. Decision, 2020 WL 4345857 at *5. We have previously held that similar claims are di- rected to abstract ideas. See e.g. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[S]electing cer- tain information, analyzing it using mathematical tech- niques, and reporting or displaying the results of the analysis” is abstract.); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (“[O]rganizing, displaying, and manipulating data of par- ticular documents” is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (“[T]he realm of abstract ideas” includes “collecting infor- mation,” “analyzing information,” and “presenting the re- sults.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[The] process of gathering Case: 20-2270 Document: 32 Page: 5 Filed: 05/18/2021

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and analyzing information of a specified content, then dis- playing the results” is abstract.). Among other arguments, Mr. Gale contends that the Board oversimplified the claims of the ’686 application, which he alleges are more specific than the claims consid- ered in our prior caselaw. Mr. Gale argues that his claims focus on a narrow, enumerated portion of the metadata as- sociated with timing. But “a claim is not patent eligible merely because it applies an abstract idea in a narrow way.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018). The recitation of certain timing-re- lated metadata fields in the claims does not make the claims any less abstract. We also disagree with Mr. Gale’s argument that his claims are not abstract simply because they include meas- urements that are “fed into a computer that repeatedly re- calculates [an output].” Diamond v. Diehr, 450 U.S. 175, 178 (1981)). The claims in Diehr, directed to a process of molding raw synthetic rubber into cured precision prod- ucts, were patent-eligible because “they improved an exist- ing technological process, not because they were implemented on a computer,” Alice, 573 U.S. at 223, or be- cause they involved measurements. Conversely, Mr. Gale’s claims are directed to a method for monitoring the report- ing of diagnostic test results, not to any technological im- provement. Nor are Mr. Gale’s claims technological in nature simply because the claimed method is implemented on a computer. Having determined that the claims are directed to an abstract idea, we also agree with the Board that there is no inventive concept that transforms to claims into a patent- eligible application. Decision, 2020 WL 4345857, at *8–9. As the Board found, the only additional element beyond the abstract idea is a generic computer system to perform the method, the use of which is well-understood, routine, and conventional. Id. at *9. Case: 20-2270 Document: 32 Page: 6 Filed: 05/18/2021

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Mr. Gale’s argument that the claims include an in- ventive concept because the Board did not reject the claims under 35 U.S.C. § 103 is unconvincing. “[M]erely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineli- gibility.” Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019). There is no inconsistency in rejecting a claim under § 101 despite the lack of a rejection under § 103. Mr. Gale’s other arguments regarding Alice step two are similarly unavailing. It was not error for the Board to focus only on the claimed computer system at step two, be- cause the Board properly determined that the remainder of the claims simply recited the abstract idea itself. And we disagree with Mr. Gale’s attempt to analogize to Amdocs (Israel) Ltd. v. Openet Telecom, Inc., because Amdocs in- volved “an unconventional technological solution . . . to a technological problem” in which “generic components oper- ate[d] in an unconventional manner.” 841 F.3d 1288, 1300– 01 (Fed. Cir. 2016). Mr. Gale’s claims contain no such tech- nological solution, nor the unconventional operation of ge- neric computer components. III We have considered Mr. Gale’s remaining arguments and find them unpersuasive. Because we agree with the Board that the claims are directed to ineligible subject mat- ter, we affirm. AFFIRMED