In Determining § 101 Validity Under Alice, Steps of Combination Patent May Not be “Filtered Out”

The court denied defendant's motion for summary judgment that one of plaintiff's medication monitoring patents was invalid for lack of patentable subject matter and rejected defendant’s argument that certain steps should be “filtered out” of the § 101 analysis. “[Defendant] argues that the comparative step must be filtered out of the analysis when looking at a combination patent, because it is either a ‘known method’ or ‘an unpatentable . . . process.’ But there is nothing in [Alice Corporation v. CLS Bank International, 134 S. Ct. 2347 (2014)] suggesting that any steps are ‘filtered out’ when considering a combination patent. . . . When looking at a combination patent, what courts most want to know is: who would have thought to combine the known elements in the first place and why? . . . When, as here, [defendant] is asking the court to infer that the combination of elements is conventional, it must supply some evidence to convince the trier of fact to accept its version of events. . . . Given that Alice now expressly requires that courts look at patented elements in combination when assessing inventive concept (as did Mayo), the concern of hindsight bias has as much relevance to a § 101 challenge as it does a § 103 challenge.”

Ameritox, Ltd. v. Millennium Health, LLC, 3-13-cv-00832 (WIWD February 19, 2015, Order) (Conley, J.)