Patent Having Claims That Apply Law of Nature Is Patent-Eligible
On June 8, 2016, the U.S. District Court for the Central District of California issued an order denying a motion to dismiss, and found that U.S. Patent No. 5,720,894 is directed to patent-eligible subject matter in a case captioned Femto-Sec Tech, Inc. v. Lensar, Inc.
Lensar argued that the '894 Patent is directed to a "natural phenomena and laws of nature," but the Court made it clear that a patent with claims that apply laws of nature should not be considered patent-ineligible as being directed at that law of nature.
The '894 Patent is directed to the field of ultrashort pulse duration laser systems suitable for material and biological tissue processing. The patent purportedly improved upon the prior art of the use of lasers as a therapeutic and preventive tool in various fields, such as surgery, by increasing ablation efficiency while minimizing collateral damage to adjacent material.
The '894 Patent recites two independent claims, and claim 1 is representative and reproduced below.
1. A method for selective material removal processing comprising:
providing a pulsed laser;
operating said laser so as to produce a pulsed output beam, the beam comprising individual pulses each having a pulse duration in the range of from about 1 femtosecond to about 100 picoseconds;
directing said pulsed output beam onto a target material from which removal is desired, wherein each pulse interacts with a thin layer portion of said material so as to form a plasma;
allowing said formed plasma to decay, such that said material portion is removed; and
repeating said plasma formation step at a pulse repetition rate greater than 10 pulses per second until a sufficient depth of material has been removed with substantially no transfer of thermal or mechanical energy into the remaining material and substantially no collateral damage thereto.
Nuijten Standard
An invention is patent-eligible if it claims a new and useful process, machine, manufacture, or composition of matter, according to 35 U.S.C. § 101. Claims that encompass transitory forms of signal transmission (e.g., transitory electrical and electromagnetic signals propagated through some medium) are invalid because those transitory embodiments are not directed to statutory subject matter. In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007). A transitory signal per se is not one of the four categories of patentable subject matter.
Lensar initially provided arguments questioning whether or not a laser beam is among one of the statutory categories, and submitted that the laser beam is more analogous to a signal per se. The Court, however, found that neither of the independent claims of the '894 Patent purports to claim a laser beam per se. Instead, independent claim one clearly claims only a "method" which includes, as a required step in the process, the use of a "pulsed laser." The method claim is a "process" under 35 U.S.C. § 101 and is, thus, directed to statutory subject matter.
The Court noted that contrary to Lensar's assertion, the Federal Circuit in Nuijten did not find the electromagnetic signal to be a patent-ineligible natural phenomenon. Courts applying Nuijten do not strike patents that improperly claim natural phenomenon, but rather, patents that improperly claim transitory signals. Here, because no signal is claimed, the Nuijten arguments were not relevant.
Alice Standard
Laws of nature, natural phenomena, and abstract ideas are not patentable. The two-step Alice test is used for patent eligibility purposes. First, the Court must determine whether the claims at issue are directed to one of those patent-ineligible concepts, and if so, then the second step requires the Court to search for an inventive concept.
Lensar argued that the claims are directed toward natural phenomena and the laws of nature. The Court found that Lensar failed to indicate what portion of the patent claims appear to claim for itself a particular law of nature, and rather, found that the '894 patent does not, in fact, recite a law of nature.
In Alice, the Supreme Court reiterated that a "patent is not rendered ineligible for patent simply because it involves" a patent-ineligible concept. Instead, a patent is ineligible if it is directed to the patent ineligible concept, for example, by claiming an essential building block of human ingenuity or a scientific principle.
Here, the Court found that the claims of the '894 Patent are not directed towards the broad, generalized use of electromagnetic spectrum. Instead, the '894 Patent has claimed a particularized, specific use of a specific range of the electromagnetic spectrum; a use that the '894 Patent claims has particular and useful effects. The Court further iterated that the plain focus of the claim is not directed, broadly, to laser beams, but instead the focus of the claim is the operation of a pulse laser of an ultrashort duration (between a femtosecond (quadrillionth of a second) and 100 picoseconds (trillionth of a second)) repeatedly to achieve the desired results of material removal with substantially no collateral damage.
The Court made clear that although this invention, like all patent-eligible inventions, may at some level "apply laws of nature," that does not mean that the present invention is directed at that law of nature.
The Court also noted that Lensar failed to show how ultrashort pulse laser beams are naturally occurring phenomena. In fact, the '894 Patent indicates that the ultrashort pulse laser beams have to be generated from a specialized piece of equipment. The Court found that the discovery that the material-removing properties of ultrashort pulsed lasers have beneficial effects is "not nature's handiwork" but rather the work of the inventor of the subject matter here.
Although the Court concluded that the claims of the '894 Patent survive scrutiny under step one of the Alice analysis, the Court also determined that the claims of the '894 Patent would also survive under step two of the Alice framework. The Court highlighted the fact that use of ultrashort pulsed beams at least improves the functionality of a laser for a specific, particularized purpose: material removal.
The Court thus concluded that the claims of the '894 Patent are patent eligible. The Court here provides a nice example to push-back on the unfounded allegations of § 101 attacks, and made it clear that a patent with claims that apply laws of nature should not be considered patent-ineligible as being directed at that law of nature.
Order Denying Defendant's Motion to Dismiss by Honorable James V. Selna
