Wave Neuroscience, Inc. v. PeakLogic, Inc.

District Court, S.D. California·Decided October 7, 2024·No. 3:21-cv-01330·Unknown

Opinion

Wave Neuroscience, Inc., a Delaware Case No.: 21cv1330-CAB-SBC corporation, ORDER ON MOTION FOR Plaintiff/Counterclaim Defendant, v. INVALIDITY

Peaklogic, Inc., a Delaware corporation; [Doc. No. 207] and Kevin T. Murphy, M.D., a Professional Corporation, doing business as Mindset, Defendants/Counterclaim Plaintiffs.

Plaintiff Wave Neuroscience, Inc. (“Wave”) alleges that defendants Peaklogic, Inc. and Kevin Murphy, M.D. (hereafter jointly “Peaklogic”) infringe certain claims of U.S. Patents Nos. 8,475,354 (‘354 patent); 8,480,554 (‘554 patent); and 9,446,259 (‘259 patent). Peaklogic moves for summary judgment of invalidity contending all the asserted claims are directed to a natural phenomenon and not patentable subject matter under 35 U.S.C. § 101. [Doc. No. 207.] Wave filed an opposition. [Doc. No. 216.] Peaklogic filed a reply. [Doc. No. 227.] The Court held argument on September 3, 2024. For the reasons set forth at the hearing and discussed below, the motion is Granted in Part and Denied in Part. The patents at issue are directed at devices (‘354 patent) or methods (‘259 and ‘554 patents) for generating a magnetic field and using that field to adjust the electrical activity of a subject’s brain from its intrinsic frequency to a pre-selected frequency.1 The ‘259 and ‘554 patents claim magnetic adjustment methods as treatments for mental disorders, such as depression. The ‘354 patent claims a Transcranial Magnetic Stimulation (TMS) device to generate the magnetic field and based on the subject’s brain frequency measured using electroencephalography (EEG) moving that frequency using repetitive firing of the magnetic field to a pre-selected frequency. Peaklogic contends that the asserted claims simply recite the natural phenomenon that the brain’s frequency will respond and adjust to external magnetic pulses, a normal physiological response. Further, the claims employ well-understood, routine, and conventional devices and methods to achieve this natural response and therefore provide no patentable inventive concept. I. Legal Standard Summary judgment is appropriate when there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56. At summary judgment, the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). “Whoever 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 requires of this title.” 35 U.S.C. § 101. This statutory provision is subject to the judicially-created exclusion principle that “laws of nature, natural phenomena, and abstract ideas” are not themselves eligible to be patented. Alice Corp. Pty. V. CLS Bank Int’l, 573 U.S. 208, 216-17 (2014). The court is directed to apply a two-step test for the determination of patent eligibility. First, the court must evaluate whether the claims at issue are directed to one of the patent ineligible concepts. Id. at 217. If so, the court proceeds to the second step and evaluates whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application. The second step is referred to as the search for inventive concept. Id. at 217–18. The second step is satisfied when the claim limitations involve more than performance of well understood, routine, and conventional activities previously known to a person of skill in the relevant field at the time the patent was filed. Berkheimer v. HP, Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018). Whether the claim limitations are well understood, routine and conventional activities is a question of fact. Id. at 1370. II. Claim 39 of the ‘354 Patent The only claim of the ‘354 patent asserted in this litigation is independent Claim 39. Claim 39 is for a device, specifically a Transcranial Magnetic Stimulation (TMS) device that uses an electromagnet to generate a magnetic field. By applying the magnetic field to the subject, the electrical activity of the subject’s brain, its intrinsic (i.e., natural) frequency, can be altered or tuned. The claimed TMS device has a processor that controls repetitive firing of the magnetic field, also known as Repetitive Transcranial Magnetic Stimulation (rTMS). TMS devices and the application of a series of repetitive magnetic pulses (rTMS) were known in the art at the time the patent was filed. [Doc. No. 18-1, ‘354 Patent, Background of the Invention, Col. 1:20-25.] The claim includes the limitation that the intrinsic frequency of a brain of a subject be within a specified Electroencephalography (EEG) band and that a pre-selected different frequency within that EEG band is determined prior to treatment. Wave acknowledged that it did not invent the EEG and that the patents do not disclose or claim an improvement in the functioning of the EEG to measure the electrical activity of the brain. Using the repetitive firing of the magnetic field, the subject’s intrinsic frequency is moved to the pre- selected intrinsic frequency within the specified EEG band. Peaklogic argues that this claim is directed at a natural phenomenon, that subjecting a person’s brain to a magnetic field will result in the electrical frequency of the brain being altered to a different frequency. While it takes a human action, the administration of the magnetic field to the subject’s brain, the manifestation of that action—that the electrical frequency of the brain will respond to the external magnetic field—is a natural process. See Mayo Collaborative Services v. Prometheus Labs, Inc., 566 U.S. 66, 77 (2013) (“[T]he relation itself [between the external magnetic field and the brain’s intrinsic frequency] exists in principle apart from any human action.”). Peaklogic further contends that the tools described in Claim 39 (a TMS device, rTMS, and EEG readings) employed to achieve this natural phenomenon are routine applications of well known, conventional means and do not transform the claim into patentable subject matter. Wave counters that Claim 39 is not directed at the natural phenomenon of altering the brain’s intrinsic frequency by exposing it to a magnetic field. Rather Wave argues it is directed at a new way to apply the TMS device to treat patients with brain disorders. Using the natural phenomenon that the brain can be “tuned,” Wave contends the patent provides “prescribed magnetic fields … reciting specified brain biometric markers, and associated personalized protocols to alter the patient’s brain, specifically altering those biomarkers in an individualized and targeted (pre-selected) manner.” [Doc. No. 216 at 22.] See Vanda Pharms. Inc. v. West-Ward Pharms., Int’l Ltd., 887 F.3d 1117, 1135 (Fed. Cir. 2018) (the claim limitations of specific dosages were significant to finding a new way of using an existing drug was not merely directed to a law of nature). Although other unasserted claims of the ‘354 patent may include such treatment specifics and personalized protocols directed at treating brain disorders as contended by Wave, the limitations of the only asserted claim, Claim 39, do not. The Court finds that Claim 39 is directed to a natural phenomenon: that the repetitive application

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Wave Neuroscience, Inc. v. PeakLogic, Inc., (S.D. Cal. 2024).

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Related

Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (Supreme Court, 1986)
Berkheimer v. Hp Inc.
881 F.3d 1360 (Federal Circuit, 2018)
Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals
887 F.3d 1117 (Federal Circuit, 2018)