In April, in Xlear, Inc. v. STS Health, LLC, District Judge David Nuffer of the U.S. District Court for the District of Utah denied a motion for summary judgment filed by Defendant STS Health, LLC, finding that the asserted claims of U.S. Patent No. 6,054,143 "do not point to an ineligible subject matter."  In denying STS's motion, the District Court also noted that "even if it were necessary to analyze the '143 patent under step two of the Alice Framework, STS has not carried its burden under that step."

Plaintiff Xlear initiated the dispute between the parties when it filed suit against STS for infringement of the '143 patent.  In response, STS filed a motion to dismiss, arguing that the asserted claims were directed to the naturally occurring product xylitol, which was administered using well-understood, routine, conventional activity previously engaged in by researchers in the field.  The District Court denied the motion, finding that the '143 patent did not claim the naturally occurring product xylitol/xylose, but rather was directed to a method for delivery of the xylitol/xylose to clean out the nasopharynx in a human.  The Court also found that STS had not presented evidence of similar applications of xylitol prior to the '143 patent.  STS then filed its motion for summary judgment that the asserted claims were invalid under 35 U.S.C. § 101 for failing to recite patent eligible subject matter, citing seven issued patents as evidence that the nasal administration of xylitol/xylose was well-known, conventional, and routine when Xlear filed the application that issued as the '143 patent.

In dismissing STS's motion for summary judgment, the District Court noted that when it denied STS's motion to dismiss, the Court had determined that under step one of the Alice framework the asserted claims were directed to a process or method that is not a law of nature or natural phenomenon.  In particular, the Court found that "the '143 patent does not claim the discovery of xylitol/xylose or the product itself," and "does not claim the exclusive right to every application of xylitol/xylose," but rather, the asserted claims "focus on the process of practically applying xylitol/xylose to clean the nasopharynx."  The Court therefore noted that:

Because it was determined that the claims do not point to an ineligible subject matter, it was unnecessary to proceed to the second step and determine "whether additional elements 'transform[ed] the nature of the claims' into a patent-eligible application."  The analysis in the Previous Order should have stopped after concluding that the claims of the '143 patent do not point to patent ineligible subject matter.  The Previous Order should not have stated that additional evidence was needed to resolve the second step of the Alice Framework.

However, the Court also noted that STS's motion for summary judgment would have failed even if it had been necessary to analyze the '143 patent under step two of the Alice framework.  In support, the District Court cited the Federal Circuit's decision in Berkheimer v. HP, Inc. for the proposition that whether "something is well-understood, routine, or conventional to a skilled artisan at the time of the patent is a factual determination" that "goes beyond what was simply known in the prior art."  In particular, the Court noted that:

STS has not shown how the seven cited patents teach the same invention as the '143 [patent].  The seven cited patents address the use of xylitol/xylose to aid in the absorption of other compounds through mucosal membranes, such as that found in the nose.  None of the cited patents address using xylitol/xylose to clean the nasopharynx.

The Court also pointed out that notwithstanding the seven patents identified by STS, Xlear continued to argue that nasal administration of xylose/xylitol for cleaning the nasopharynx in a human was not conventional at the time of application, and the Court determined that "[t]he seven cited patents do not disprove that contention and STS has not demonstrated the absence of an underlying genuine issue of material fact that would permit deciding patent eligibility 'on summary judgment as a matter of law.'"

The District Court concluded its opinion by noting that "[a]s the Previous Order determined under the first step of the Alice Framework, the claims of the '143 patent do not point to patent ineligible subject matter," and finding that "[t]he ‘143 Patent is therefore not invalid under § 101."  The Court therefore denied STS's motion for summary judgment.

Xlear, Inc. v. STS Health, LLC (D. Utah 2019)
Memorandum Decision and Order Denying Motion for Summary Judgment by District Judge Nuffer