PositiveID Corporation (fka PSID)

[TheyCallMeBruce]

Lawsuit against Thermomedics.

I'm not a lawyer but is appears to me that a patent lawsuit has been dismissed.

http://www.fenwick.com/FenwickDocuments/Exergen-v-Thermomedics-Doc-118.pdf


1
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
__________________________________________
)
)
EXERGEN CORP., )
)
Plaintiff, )
)
v. )
) Civil Action No. 13-11243-DJC
)
THERMOMEDICS, INC., et al., )
)
Defendants. )
)
)
__________________________________________)
MEMORANDUM AND ORDER
CASPER, J.
September 15, 2015
I.
Introduction
Plaintiff Exergen Corporati
on (“Exergen”) has filed this lawsuit against Defendants
Sanomedics International Holdings, Inc., and Th
ermomedics, Inc., (collectively, “Defendants”)
alleging patent infringement.
D. 1, 17. Defendants have move
d for summary judgment on the
affirmative defense that the asserted patent cl
aims are invalid. D. 83, D. 84. For the reasons
stated below, the Court
ALLOWS
Defendants’ motion for summ
ary judgment of invalidity
under 35 U.S.C. § 101, D. 83, and
DENIES
as moot Defendants’ remaining arguments for
invalidity under 35 U.S.C. § 102 and/or § 103, D. 84.
II.
Standard of Review
The Court grants summary judgment where there
is no genuine dispute as to any material
fact and the undisputed facts de
monstrate that the moving party
is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a).
“A fact is material if it carries with it the potential to affect
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 1 of 13
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the outcome of the suit under the
applicable law.” Santiago–Ram
os v. Centennial P.R. Wireless
Corp., 217 F.3d 46, 52 (1st Cir. 200
0) (quoting Sánchez v. Alvara
do, 101 F.3d 223, 227 (1st Cir.
1996)). The movant bears the burden of dem
onstrating the absence of a genuine issue of
material fact. Carmona v. Toledo, 215 F.3d 124,
132 (1st Cir. 2000); see Celotex v. Catrett, 477
U.S. 317, 323 (1986). If the movant meets its bu
rden, the non-moving party may not rest on the
allegations or denials in her pleadings,
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256
(1986), but “must, with respect to each issue on
which she would bear the burden of proof at
trial, demonstrate that a trier of
fact could reasonably resolve that
issue in her favor
.” Borges ex
rel. S.M.B.W. v. Serrano–Isern, 605 F.3d 1, 5 (1st
Cir. 2010). “As a general rule, that requires
the production of evidence that
is ‘significant[ly] probative.’”
Id. (quoting Anderson, 477 U.S.
at 249) (alteration in original).
The Court “view[s] the record in
the light most favorable to the
nonmovant, drawing reasonable infe
rences in his favor.” Noona
n v. Staples, Inc., 556 F.3d 20,
25 (1st Cir. 2009).
III.
Factual Background
Exergen asserts that Defendants’ Caregiver
Non-Contact Thermometer has infringed four
claims of United States Patent No. 7,787,938 (the
“’938 patent”). The ’
938 patent, invented by
Dr. Francisco Pompei, Exergen’s Chief Executive
Officer, describes a method of measuring an
individual’s body temperature ba
sed upon radiation and temperatur
e measurements taken at the
temporal artery at the side of the forehead.
The patent sets forth mathematical formulas for
converting the measurements into a skin surf
ace temperature reading and then converting the
skin surface temperature into an approximation
of the subject’s core body temperature, taking
into account the ambient air temperature. D. 86-1.
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 2 of 13
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Id. The Court warned that simply reciting an
abstract idea “while adding the words ‘apply it’”
was insufficient to “transform a patent-ineligible
abstract idea into a pate
nt-eligible invention.”
Id. (quoting Mayo, 132 S. Ct. at 1294).
2.
Step One: Patent-Ineligible Concepts
The first step in the § 101 anal
ysis asks “whether the claims at
issue are directed to one of
[the] patent-ineligible concepts,” namely laws of
nature, natural phenomena, or abstract ideas.
Alice, 134 S. Ct. at 2355. The pa
rties do not seriously dispute that
the four claims at issue are
directed to patent-ineligible
concepts. Claims 51 and 54
recite a method for processing
temperature and radiation measurem
ents to estimate body temperatur
e “based on heat flow from
an internal body temperature to ambient temperat
ure.” D. 86-1 at 16. The Supreme Court has
explained that “if a law of nature
is not patentable, then neither
is a process reciting a law of
nature, unless that process has a
dditional features” that supply an
inventive concept at step two
of the § 101 analysis. Mayo, 132
S. Ct. at 1297. Claims 51 and
54 and their related dependent
claims are directed to applying mathematical models of natural thermodynamic relationships, so
the § 101 analysis proceeds to the second step.
3.
Step Two: Inventive Concept
The dispositive question is therefore, as in
Mayo: “do the patent
claims add enough to
their statements of the [natural laws and phenom
ena] to allow the processes they describe to
qualify as patent-eligible pro
cesses that apply natural laws
?” Mayo, 132 S. Ct. at 1297
(emphases in original). The court must consider
the elements of each asserted claim individually
and as an ordered combination to determine if the
claim contains a patentable inventive concept.
Id. at 1297-98. Another district court recently c
onsidered the same § 101 question as to claims
51 and 54 of the ‘938 patent and held that the s
ubject matter of these claims was unpatentable.
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 8 of 13
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Brooklands, 2015 WL 5096464, at *6 (g
ranting summary judgment to
defendants under § 101).
For the reasons set forth below, this Court agrees
with this conclusion and also concludes that the
dependent claims 52 and 55 do not recite
patent-eligible subject matter.
As discussed above, the independent claims
break down into processing and measuring
elements. The processing elements recite a me
thod for converting a temperature or radiation
reading to a body temperature esti
mate based on “heat flow from
an internal body temperature to
ambient temperature.” D. 86-1 at 16. These elem
ents simply describe the application of a heat
flow model, which is itself a natural phenom
enon akin in Mayo to the natural biological
relationship between concentrations of metabolites
in the blood and the necessary drug dosage.
The Mayo Court held that these elements do not c
ontribute to patentability because these clauses
simply “tell the relevant audience about th
e laws” of nature.
Mayo, 132 S. Ct. at 1297.
The measuring elements recite the measurement
of temperature or radiation at a region of
skin of the forehead. D. 86-1 at 16. Th
e measuring elements include no limit on how
temperature or radiation is to be determine
d, leaving only the measurement of a naturally-
occurring phenomenon at a particular locatio
n on the body. These elements parallel the
“determining” elements in the Mayo patent claims
that directed the doctor to determine the level
of a certain chemical
in the subject. 132 S. Ct. at
1295. The Mayo Court found no inventive
concept in these elements because they “simpl
y tell doctors to enga
ge in well-understood,
routine, conventional activity prev
iously engaged in by scientists
in the field.” Id. at 1298.
Whether there is an inventive concept
in the measuring and
processing elements
considered together presents a closer question.
Exergen argues that wh
en taken together, the
measurement of body temperature from the surface of th
e forehead is patent eligible because this
practice was thought to be impossible at the tim
e the ’938 patent was issued. According to
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 9 of 13
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Exergen’s expert Dr. Collins, prior to the i
ssuance of the ’938 patent, the notion that body
temperatures could be determined from skin te
mperature was not widely accepted. D. 97-1 ¶ 8.
Exergen cites a 1996 study from the Thermoregul
ation Research Laboratory at UCSF that
warned the medical community of the dangers of
using skin temperature as a substitute for
traditional core-temperature monitoring sites an
d reported a “poor correlation” between skin
temperature and core temperature. D. 97-6
at 3. The American Society for Testing and
Materials, an international organization that deve
lops technical standards, concluded in its 2003
and 2009 standards for infrared th
ermometers that skin temperat
ure could not be independently
correlated with core body temperature. D.
97-1 ¶¶ 8-9. Dr. Pompei spent years conducting
clinical trials of Exergen’s forehead ther
mometer to overcome skepticism among medical
professionals who believed that measuring temperat
ure at the forehead could not lead to accurate
estimates of core body temperature. D. 97-2 ¶¶ 5-7.
The Supreme Court has warned that “limiting an
abstract idea to one field of use” is not
enough to make the concept patentable. Bilski
v. Kappos, 561 U.S. 593, 612 (2010). In Parker
v. Flook, the patent at issue pr
ovided a method for measuring, cal
culating and adjusting “alarm
limits” in the cata
lytic conversion of hydrocarbons. 437
U.S. 584, 585 (1978). The Court found
the claimed process unpatentable because all st
eps in the claimed process were well known and
the patent application “simply provide[d] a ne
w and presumably better method for calculating
alarm limit values.” Id.
at 594-95. As the Court later su
mmarized in Diehr, the prohibition
against patenting abstract idea
s “cannot be circumvented by atte
mpting to limit the use of [the
idea] to a particular technologi
cal environment.” Diehr, 450 U.
S. at 191 (citing Flook, 437 U.S.
at 584).
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 10 of 13
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The Court finds persuasive the district c
ourt’s analysis in Brooklands of Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371
(Fed. Cir. 2015), a recent Federal Circuit
decision. See Brooklands, 2015 WL 5096464, at *6. The
patent in question in Ariosa claimed a
method for detecting fetal DNA in the blood of a
pregnant woman. The Fe
deral Circuit accepted
that “no one was using the plasma or serum of
pregnant mothers to amplify and detect” fetal
DNA before the issuance of the patent in ques
tion and that the disc
overy “reflect[ed] a
significant human contribution.”
788 F.3d at 1379. The Brookla
nds court explained, however,
that “[t]he discovery of a law
of nature, such as the method fo
r non-invasive fetal testing in
Ariosa . . . , no matter how novel, cannot on [its
] own amount to patentable subject matter.”
2015 WL 5096464, at *6. The Brooklands court c
ontinued, applying this analysis to the
patentability of claims 51 and 54:
Exergen may well be correct that Dr. Po
mpei’s discovery that surface skin
measurements taken at the forehead reli
ably can be converted to accurate body
temperature is novel and valuable. Howeve
r, the additional step
of measuring the
surface skin of the forehead is a necessa
ry, conventional step involving collecting
the data needed to be plugged into the ma
thematical equations
in the processing
step. Measuring temperature or radia
tion is simply not an inventive or
unconventional step in the field of thermometry.
Id. This Court agrees with this analysis.
No matter how novel the co
ncept of measuring body
temperature from forehead skin temperature or
how valuable the contribution to the medical
community, this idea as set forth in the asserted
claims is fundamentally a discovery of a natural
relationship between skin temper
ature and body temperature.
“Groundbreaking,
innovative, or
even brilliant discovery does not by itself sati
sfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2117 (2013) (holding in part that discovery
and isolation of naturally occurring segment of
DNA, while “important and useful,” is not
patentable under § 101).
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 11 of 13
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It is clear that the dependent claims, cl
aims 52 and 55, do not pr
ovide the inventive
concept missing in the independent claims. E
ach dependent claim adds the element to its
corresponding dependent claim that “the region of
the skin is over an artery.” Defendants
correctly observe that an artery is a natural elem
ent and does not add an inventive concept. D. 87
at 26. The asserted claims lack an inventive co
ncept outside of the laws of nature and are not
eligible for patent protection.
1
4.
Machine-or-Transformation Test
Finally, Exergen looks to the machine-or-tra
nsformation test to bolster the patent-
eligibility of its asserted claims
. D. 97 at 21. This test remains “a useful and important clue” for
considering § 101 invalidity challe
nges, but it is not the definitive
test for patent eligibility.
Bilski, 561 U.S. at 604. Under this
test, a claimed process is “pat
ent-eligible unde
r §101 if: (1)
it is tied to a particular machine or apparatus; or (2) it transforms a particular article into a
different state or thing.” Id. at
602 (internal citation omitted). Ex
ergen argues that the claims in
question “transform data, namely, temperature or
radiation measurements taken from forehead
skin, into a body temperature read
ing.” D. 97 at 22. However, the Court finds no transformative
element here, where the claims simply apply a ma
thematical formula to temperature or radiation
measurements and do not change the measurements
“into a different state or
thing.” Bilski, 561
U.S. at 602.
1
In reaching this conclusion, the Court has
not placed weight on Defendants’ argument
that measuring temperature at the forehead is not an “inventive concept” because it was
anticipated by prior art. D. 87 at 30. The ques
tion of whether a particular invention is novel is
“wholly apart from whether the
invention falls into a category
of statutory subject matter.”
Diehr, 450 U.S. at 190 (interna
l quotation and citation omitted).
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 12 of 13
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VI.
Conclusion
As the asserted claims are invalid under §
101, the Court need not reach Defendants’
alternative arguments for invalidity on the groun
ds of anticipation and obviousness under §§ 102
and 103. For the foregoing reasons, the Court
ALLOWS
Defendants’ motion for summary
judgment of invalidity under 35 U.S.C. § 101, D. 83, and
DENIES
as moot Defendants’ motion
for summary judgment of invalidity unde
r 35 U.S.C. § 102 and/or § 103, D. 84.
So Ordered.
/s/ Denise J. Casper
United States District Judge
Case 1:13-cv-11243-DJC Document 118 Filed 09/15/15 Page 13 of 13