Breast Prosthesis Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s breast prosthesis patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "While the process claimed in the [patent-in-suit] does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components. The patent claims imaging of the breast to the ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in the computer modeling. In determining whether an invention encompasses an abstract idea, courts caution against an approach that focuses only on physical or tangible results of an invention because it 'inappropriately focuses on the result of the claimed invention rather than the invention itself.' Even taking this cautionary note into consideration, the [patent] still falls outside of the abstract ideas in the precedent because the concept of the invention involves substantially more than mere data collection and storage and does not threaten to preempt the use of scanners and computer modeling in other fields. . . . Therefore, the [patent-in-suit] is not directed to an abstract idea and does not need to be examined under the second step of the Alice framework."

ContourMed Inc. v. American Breast Care LP, 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.)