August 27, 2020
In XY, LLC et al. v. Trans Ova Genetics, LC, 2020 WL 4378028 (Fed. Cir. July 31, 2020), the Federal Circuit addresses a familiar problem: If the “inventive” part of a claimed invention resides purely in its math, can routine and conventional physical steps taken in conjunction with that math make the invention subject-matter eligible? The court answers “yes, at least in some circumstances.”
The sperm sorting technology
The invention involves flow cytometry, a technology used to analyze particles and, in some applications, help physically sort particles. In flow cytometry, particles are carried by a fluid stream and directed through the path of a laser beam that illuminates the particles (which are treated with a dye that fluoresces under laser excitation), and through the field of vision of one or more light detectors that capture an optical signal corresponding to each particle.
The accused technology in Trans Ova analyzes and sorts sperm cells. Flow cytometry works in that context because a flow cytometer can detect the difference in optical signals emitted by sperm carrying X chromosomes versus sperm carrying Y chromosomes (which have different molecular weights). Then, a droplet from the fluid stream that is carrying a given sperm cell is directed by charge plates into one of two receptacles depending on which chromosome (X or Y) the sperm cell has.
In “conventional technology,” as described by the patent-in-suit, the detector data often does not show a sufficient distinction between data points for some sperm cells. Such cells are therefore discarded rather than sorted. The patented invention purports to improve on conventional technology by applying a “rotational alteration” to the data to provide better spatial separation of the data along a dimension of multi-parameter space (mathematical space, not physical space). This allows the claimed cytometer to distinguish between and sort some X and Y carrying sperm that could not have been distinguished and sorted using prior technology. Specifically, claim 1 of U.S. Patent RE46,559 (“the ‘559 patent”) recites using at least two detectors in a flow cytometer to detect signals from the particles, converting the signals into “n-parameter data,” rotationally altering that data to increase spatial separation in at least one dimension of the data, classifying in real time the particles as belonging to one population or another population of the particles, and sorting the particles based on the real-time classification.
The district court holds the claims ineligible
The district court, acting on the pleadings, held that the claims were ineligible subject matter under 35 U.S.C. § 101. Using the Alice two-step analysis, the district court found at step one that the claims were directed to the abstract idea of a “mathematical equation that permits rotating multi-dimensional data.” The court then found at step two that XY, LLC’s admission that other claim elements were known precluded finding an “inventive concept.” Trans Ova 2020 WL 4378028 at *3 (citing the district court opinion).
The Federal Circuit reverses
The Federal Circuit reverses and holds the claims eligible at Alice step one as not directed to an abstract idea. The Federal Circuit analogizes the case before it to both the Supreme Court’s Diamond v. Diehr decision from 1981 and its own Thales Visionix, Inc. v. U.S. decision from 2017. In Diehr, the Supreme Court found eligible subject matter in an invention for opening a rubber-molding press at the right moment based on temperature measurements obtained by applying a well-known math equation to sensor readings taken repeatedly over time while the press is closed. In Thales, the Federal Circuit found eligible subject matter in a motion-tracking system that uses inertial sensors on a moving platform and on an object on that platform to measure the object’s movement relative to the platform directly rather than first relating the movement of both the object and the platform to the earth as a reference frame.
The Federal Circuit in Trans Ova finds both precedents instructive and concludes: “Like the claims in Diehr and Thales, claim 1 of the ‘559 patent incorporates applied mathematics in a purported improvement to an otherwise-known method to yield and improved result.” Trans Ova at *5.
The analogy for 101 purposes between the patented technology in Diehr and the patented particle sorter in Trans Ova is clear. In both cases, a mathematical computation based on sensor data is used to perform clearly physical, albeit simple acts: Opening a molding press in Diehr and directing X versus Y carrying sperm cells to different receptacles in Trans Ova.
However, the 101 analogy between Thales and the claims in Trans Ova is somewhat less clear. In Thales, the purported improvement included a difference in what data a sensor was configured to gather. The prior art sensors gathered data about a platform’s (e.g. a vehicle’s) and an object’s (e.g. a helmet’s) movement relative to the earth and converted that to relative movement between platform and object. The invention’s sensors in Thales instead gathered data about the platform’s movement and about the object’s movement using only the reference of the moving platform itself (i.e., without first relating both the platform and object to the reference frame of the earth). Thus, in Thales, there was a clear difference from the prior art in what data was gathered, which presumably required a difference in sensor configuration. By contrast, the invention at issue in Trans Ova does not purport to collect different data, or to collect data differently, than did the prior art. Rather, it simply analyzes the same data in a different way to better make distinctions between the measured particles.
Data input gathering versus taking further action based on data analysis
The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (84 FR 50, January 7, 2019) along with its October 17, 2019 Patent Eligibility Update (“the October Update”) gives different weight to physical steps taken to gather data used by a mathematical operation versus physical steps taken later in response to the math’s results. The former, by itself, appears insufficient under the USPTO’s guidance to make the math sufficiently “integrated into a practical application” for the invention’s subject matter to be eligible at Alice step one. The latter, however, generally is sufficient.
The October Update’s Example 46, regarding a livestock management invention, makes this particularly clear: Claim 1 recites gathering livestock data via monitors (e.g., video cameras), analyzing the data to determine whether an animal’s data appears to be aberrant, and displaying the results. The USPTO considers this claim not eligible. By contrast, Claim 3 of the same example adds the step of controlling a sorting gate to separate animals with aberrant behavior from those with normal behavior. This additional step renders the claim eligible.
In Trans Ova, the Federal Circuit does not expressly rely on such a distinction in finding the claims subject-matter eligible under Alice step one. Of course, since both physical data gathering steps and post-analysis physical steps (e.g., sorting) were present in the ‘559 patent claims, such a distinction is not necessary. The result in Trans Ova could have been fully supported by analogy to Diehr. But it is worth noting that the Federal Circuit does not, in its discussion, rely solely the ‘559 patent’s post analysis “sorting” step. Rather, it discusses both the invention’s physical steps of data gathering and its post analysis sorting steps without weighing one more heavily than another.
Trans Ova thus leaves open the question of whether a flow cytometry claim that did not add a “sorting” step would still be subject matter eligible. That question implicates many other analytic instrument technologies including mass spectrometry, chromatography, capillary electrophoresis, PCR and microarray analysis, among others.
Author: Michael Mauriel