United States District Court, E.D. Pennsylvania
present motion, Defendants, The ScottCare Corporation and
Ambucor Health Solutions, Inc., ask that the Court grant
their Motion for Judgment On The Pleadings Or, In The
Alternative, Summary Judgment (“Motion”) (Doc.
211) with respect to Plaintiffs' asserted claims of
United States Patent Nos. 7, 587, 237 (the “'237
Patent”) and 7, 941, 207 (the “'207
Patent”). For the reasons set forth more fully below,
Defendants' Motion is GRANTED.
FACTUAL AND PROCEDURAL BACKGROUND
CardioNet, LLC and Braemar Manufacturing, LLC (collectively,
“Plaintiffs” or “CardioNet”) bring
this patent infringement action against Defendants, The
ScottCare Corporation and Ambucor Health Solutions, Inc.
(collectively, “Defendants” or
“ScottCare”), alleging that Defendants are
infringing five patents originally owned by CardioNet, which
CardioNet assigned to Braemer Manufacturing,
Pls.' Second Am. Compl., Doc. 58. The
patents-in-suit -two of which are the subject of the
pending motion -are directed to multiple aspects of an
electrocardiographic (“ECG”) telemetry device and
its software. Pls.' Second Am. Compl., Doc. 58. The ECG
telemetry device uses a monitor to record and transmit the
electrical activity of the heart over a period of time.
Pls.' Second Am. Compl., Ex. C, Doc. 58. This device
helps medical professionals monitor a patient's cardiac
activity and detect cardiac irregularities. Pls.' Second
Am. Compl., Ex. C, Doc. 58. The cardiac data recorded by the
ECG telemetry device is transmitted to a remote location
where medical technicians review the information. Pls.'
Second Am. Compl., Ex. C, Doc. 58. This information can then
be sent to a medical professional for further review and
diagnosis. Pls.' Second Am. Compl., Ex. C, Doc. 58.
allege that Defendants have infringed and are continuing to
infringe their patents by making, using, selling, and/or
offering for sale ScottCare's TeleSentry Mobile Cardiac
Telemetry System, which consists of a device that records and
processes a patient's ECG signal and a monitoring service
whereby personnel at Ambucor evaluate the cardiac data
transmitted by the device. Pls.' Second Am. Compl., Doc.
Overview of CardioNet's Mobile Cardiac Outpatient
Telemetry (“MCOT™”) Device
LLC, a corporation having its principal place of business in
Conshohocken, Pennsylvania, provides continuous, real-time
ambulatory “outpatient management solutions for
monitoring clinical information regarding an individual's
health.” Pls.' Second Am. Compl. 1, Doc. 58.
CardioNet LLC, through its MCOT™ device, focuses on the
diagnosis and monitoring of cardiac arrhythmias, or heart
rhythm disorders. Pls.' Opp'n To Defs.' Mot. J.
Pleadings 5, Doc. 224. A cardiac arrhythmia is a disorder of
the heart rate or rhythm-i.e. a person's heart beats too
quickly, too slowly, or with an irregular pattern. Pls.'
Opp'n To Defs.' Mot. J. Pleadings 2, Doc. 224. A
physician can diagnose an arrhythmia remotely by monitoring a
patient's heart rhythm. See Pls.' Opp'n
To Defs.' Mot. J. Pleadings 4-5, Doc. 224. If done
remotely, an ambulatory cardiac monitoring device will record
the patient's heart rate either intermittently or
continuously. See Pls.' Opp'n To Defs.'
Mot. J. Pleadings 4-5, Doc. 224.
MCOT™ device enables heartbeat-by-heartbeat ECG
monitoring, analysis, and response, at home or away, 24 hours
a day, 7 days a week, 365 days a year. Pls.' Opp'n To
Defs.' Mot. J. Pleadings 5, Doc. 224. The MCOT™
device includes a patient-worn sensor attached to electrodes
that capture two-channel ECG data, measuring electrical
activity of the heart and communicating wirelessly with a
company-handheld-monitor. Pls.' Second Am. Compl., Ex. J,
Doc. 58. The monitor analyzes incoming heartbeat-by-heartbeat
information from the sensor on a real-time basis by applying
algorithms designed to detect abnormal heart
“events”-i.e. arrhythmias. See Pls.'
Opp'n To Defs.' Mot. J. Pleadings 4-5, Doc. 224. When
the monitor detects an arrhythmia, “it automatically
transmits [ECG] information to  CardioNet['s]
monitoring center for analysis and response.” Pls.'
Opp'n To Defs.' Mot. J. Pleadings 5, Doc. 224.
Overview of the '237 Patent (Patent No. 7, 587,
'237 Patent-entitled “Biological Signal
Management”-relates to systems and techniques for
analyzing and handling a patient's biological signal for
medical purposes, including notifying cardiac monitoring
technicians when an arrhythmia has been detected by the
device. '237 Patent, Abstract, Ex. A. Biological
signals are electrical or optical streams that, in the
medical context, include information relating to the
physiological state of an organism which can be used to
diagnose and treat disease. '237 Patent, 1:7-11, Ex. A.
The handling of biological signals includes notifying medical
personnel at a remote location when an “event, ”
such as atrial fibrillation or atrial flutter (collectively
“AF”), is identified. An event is a period in
time when the information content of the cardiac electrical
activity is of increased relevance. '237 Patent, 4:19-23,
claimed method of the'237 Patent involves receipt of
cardiac biological signals involving events; determining a
measure of merit for each identified event; comparing the
measure of merit to a merit criterion; transmitting
information of the events meeting the merit criterion to a
remote medical receiver; and discarding information of the
events that do not meet the merit criterion. '237 Patent,
Abstract, Ex. A. The '237 Patent describes a method of
analyzing biological signals before handling to reduce data
clutter and handling costs. '237 Patent, 2:43-50, Ex. A.
By analyzing the biological signal before handling and only
transmitting meritorious events to the monitoring center for
review, the volume of data that is handled by the system is
reduced, including the volume of data that is reviewed by
medical technicians. '237 Patent at 2:46-50, Ex. A.
“Such reductions in data clutter can be used to quickly
provide physicians with relevant information, decreasing the
cost of data review and increasing the likelihood that
diagnosis and/or treatment is appropriately delivered.”
'237 Patent, 2:46-50, Ex. A.
Overview of the '207 Patent (Patent No. 7, 941,
'207 Patent-entitled “Cardiac
Monitoring”-relates to “[s]ystems and techniques
for monitoring cardiac activity.” '207 Patent,
Abstract, Ex. B. The systems and techniques collect
information describing variability in heart beats and
determine whether that variability is indicative of AF.
Pls.' Second Am. Compl. Ex. K, Doc. 58. The patented
method accomplishes this by: (1) “determining a
beat-to-beat variability in cardiac electrical activity,
” (2) “determining a relevance of the variability
to one of atrial fibrillation and atrial flutter, ” and
(3) “identifying . . . an atrial fibrillation  and
atrial flutter event based on the determined
relevance.” '207 Patent, 1:49-56, Ex. B.
Overview of the Pending Motion
September 11, 2018, Defendants filed the instant Motion
arguing that the '237 and '207 Patents are directed
to abstract ideas and that the asserted claims do not contain
inventive concepts, thereby rendering the Patents ineligible
under 35 U.S.C. § 101 (“§ 101”).
Defs.' Mot. for J. On The Pleadings, Or In The
Alternative Summ. J. 1, Doc. 211. Defendants further allege
that Plaintiffs are collaterally estopped from asserting
infringement of claims 1, 2, 8, 9, 10, 21, 22, and 23 of the
'207 Patent because Judge Talwani of the District Court
for the District of Massachusetts (“Massachusetts
District Court”) found the '207 Patent ineligible
under § 101. CardioNet, LLC v. InfoBionic,
Inc., 348 F.Supp.3d 87 (D. Mass. 2018); Defs.' Reply
in Supp. of Mot. for J. On The Pleadings, Or In The
Alternative Summ. J. 2, Doc. 228.
respond that the '237 Patent focuses on a specific
method, not an abstract idea and the asserted claims recite
an inventive concept for analyzing ECG data. Pls.'
Opp'n To Defs.' Mot. J. Pleadings 11-16, Doc. 224.
Regarding the '207 Patent, Plaintiffs claim that
collateral estoppel does not apply because the Massachusetts
District Court did not adjudicate identical issues. Pls.'
Opp'n To Defs.' Mot. J. Pleadings 17, Doc. 224.
Plaintiffs further argue that the '207 Patent is a
specific device rather than an abstract idea and the claims
recite inventive concepts that improve AF diagnosis.
Pls.' Opp'n To Defs.' Mot. J. Pleadings 21-24,
STANDARD OF REVIEW
Federal Rule of Civil Procedure 12(c), a party may move for
judgment on the pleadings after the pleadings are closed, as
long as the party does so early enough not to delay the
trial. Fed.R.Civ.P. 12(c). Courts in this Circuit construe
motions for judgment on the pleadings that assert failure to
state a claim under the same standard as motions to dismiss
made pursuant to Rule 12(b)(6). Katzenmoyer v. City of
Reading, 158 F.Supp.2d 491, 496 (E.D. Pa. 2001).
“The only notable difference between these two
standards is that the court in a motion on the pleadings
reviews not only the complaint but also the answer and
written instruments attached to the pleadings.”
Sprague v. Neil, No. 1:05-CV-1605, 2007 WL 3085604,
at *2 (M.D. Pa. Oct. 19, 2007).
survive a motion to dismiss under Rule 12(b)(6), “a
complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on
its face.'” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Bell Atlantic Corp. v.
Twombly, 550 U.S. 554, 570 (2007)). A complaint is
plausible on its face when its factual allegations allow a
court to draw a reasonable inference that a defendant is
liable for the harm alleged. Santiago v. Warminster
Twp., 629 F.3d 121, 128 (3d Cir. 2010). A court must
accept as true all factual allegations contained in a
complaint and interpret them in the light most favorable to
the plaintiff. Argueta v. U.S. Immigration & Customs
Enf't, 643 F.3d 60, 74 (3d Cir. 2011). “While
as a general rule, a court may not consider anything beyond
the four corners of the complaint on a motion to dismiss
pursuant to 12(b)(6), the Third Circuit has held that a court
may consider certain narrowly defined types of material
without converting the motion to dismiss [to one for summary
judgment pursuant [to] Rule 56].” Nasdaq, Inc. v.
IEX Group, Inc., 2019 WL 102408, at *2 (D. N.J. 2019)
(citing In re Rockefeller Ctr. Props. Sec. Litig.,
184 F.3d 280, 287 (3d Cir. 1999). “[D]ocument[s]
integral to or explicitly relied upon in the complaint may be
considered.” In re Burlington Coat Factory Sec.
Litig., 114 F.3d 1410, 1426 (3d Cir. 1997) (internal
Motion, Defendants argue that the '237 and '207
Patents are ineligible under § 101 because they are
directed to an abstract idea and the asserted claims do not
contain an inventive concept. Defs.' Mot. for J. On The
Pleadings, Or In The Alternative Summ. J. 2, Doc. 211.
Defendants further argue that Plaintiffs are collaterally
estopped from alleging infringement of the asserted claims of
the '207 Patent. Defs.' Reply in Supp. of Mot. for J.
On The Pleadings, Or In The Alternative Summ. J. 2, Doc. 228.
For the reasons that follow, the Court agrees and, therefore,
Defendants' Motion is GRANTED.
Patent Eligibility Under § 101
patent may be obtained for “any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101.
“Laws of nature, natural phenomena, and abstract
ideas[, however, ] are not patentable.” Ass'n.
for Molecular Pathology v. Myriad Genetics, Inc., 133
S.Ct. 2107, 2116 (2013) (internal brackets omitted) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012)). The Supreme Court has established a
two-step framework through which courts assess patent
eligibility under § 101. See Alice Corp. Pty. Ltd.
v. CLS Bank Int'l., 134 S.Ct. 2347, 2354-55 (2014).
a court must determine whether the claims at issue are
directed to a patent-ineligible concept-i.e. laws of nature,
natural phenomena, or abstract ideas. Id. at 2355.
Second, if the claims are directed to a patent-ineligible
concept, a court then examines whether “the additional
elements transform the nature of the claim into a
patent-eligible application.” Id. (internal
quotations omitted). To transform an abstract idea into a
patent-eligible application, the claims must do “more
than simply stat[e] the abstract idea while adding the words
‘apply it.'” Id. at 2357. Stated
otherwise, a court must determine whether the elements of the
claim, considered “both individually and as an ordered
combination, ” contain an “inventive
concept.” Id. at 2355 (internal quotations
omitted). The presence of an inventive concept will
“‘transform the nature of the claim' into a
patent-eligible application.” Id. (internal
The '237 Patent
Claims 25 and 37 are Representative of All Asserted Claims of
the '237 Patent
courts are not required to assess each asserted claim of
infringement where a patent's claims are substantially
similar to the representative claims and linked to the same
abstract idea. See Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d
1343, 1348 (Fed. Cir. 2014) (holding that where all of the
claims are directed to the same abstract idea,
“addressing each of the asserted patents . . . [is]
unnecessary”); Planet Bingo, LLC v. VKGS
LLC, 576 Fed.Appx. 1005, 1007 (Fed. Cir. 2014)
(affirming district court's finding that “[t]he
system claims recite the same basic process as the method
claims, and the dependent claims recite only slight
variations of the independent claims.”). The '237
Patent asserts four (4) independent claims-1, 22, 25, and
37-and six (6) dependent claims-4, 6, 11, 17, 29, and 32.
Claims 25 and 37 are representative of the asserted claims of
the '237 Patent.
‘237 patent is generally directed to methods of
filtering information into different groups based on
identifying characteristics and transmitting a portion of
this information to the cardiac monitoring center for review
by medical technicians. '237 Patent, Abstract, Ex. A.
Claims 1, 22, 25, and 37 explain how information is
classified into groups based on certain attributes that
relate to specific cardiac conditions; given a measure of
merit; and then transmitted or discarded based on a
comparison between the measure of merit and merit criterion.
'237 Patent, 15:10-62; 17:4-32; 17:40-18, 18:59-20-3, Ex.
1i and 25ii are substantially similar
in that they provide the same procedure, except that Claim 25
is directed to the software for performing the steps of Claim
1. Compare '237 Patent, 15:10-62, Ex. A
with 17:40-18:17, Ex. A. Likewise, Claim
22iii mirrors the procedure of Claim 37,
iv except that Claim 37 is directed to the
software for performing the steps of Claim 22.
Compare '237 Patent, 17:4-32, Ex. A
with 18:59-20-3, Ex. A. The method claims-Claims 1
and 22-are no different from the software claims-Claims 25
and 37-in substance; each are directed to the same abstract
idea of collecting, classifying, or otherwise filtering
cardiac data. See Alice, 134 S.Ct. at 2360. The
method claims recite the abstract idea of “monitoring a
cardiac biological signal using [ECG] monitoring
instrumentation” while the software claims recite
programming instructions “to cause one or more machines
to perform [the] operations for monitoring a cardiac
biological signal using [ECG] monitoring
instrumentation.” '237 Patent, 15:10-62; 17:4-32;
17:40-18, 18:59-20-3, Ex. A. Accordingly, Claims 25 and 37
accurately represent the asserted independent claims of the
'237 Patent. See Alice, 134 S.Ct. at 2360.
dependent claims-Claims 4, 6, 11, 17, 29, and
32-“recite only slight variations of the independent
claims.” Planet Bingo, 576 Fed.Appx. at 1007.
Claims 4, v 6, vi and 17,
vii depend on Claim 1 and Claim 11viii
depends on Claim 9, ix which in turn depends on
Claim 1. '237 Patent, 16:4-57, Ex. A. Claim
29x depends on Claim 27, xi which, in
turn, depends on Claim 25; and Claim 32xii depends
on Claim 25. '237 Patent, 18:32-37; 18:44-45, Ex. A.
Dependent Claims 4, 6, 11, 17, 29, and 32 define further
particulars of Claims 1 and 25, including: (1) using the same
filtering process over a certain time span, and excluding
events occurring outside of that certain time span; (2)
providing that the cardiac biological signal will comprise of
a measurement of electrical potential; (3) providing that the
information will have a time stamp; and (4) providing that
the cardiac biological signal will comprise an ECG signal.
'237 Patent, 16:4-57, 18:32-37; 18:44-45, Ex. A. The
dependent claims merely provide additional information
relating to Claims 1 and 25 by “recit[ing] only slight
variations.” Planet Bingo, 576 Fed.Appx. at
1007. Because Claim 25 is representative of Claim 1, Claim 25
accurately represents the asserted dependent claims of the
Claims 25 and 37 accurately represent the asserted
claims-Claims 1, 4, 6, 11, 17, 22, 29, and 32-of the '237
Alice Step One Analysis: Patent-Ineligible
determining whether computerized technology is directed to an
abstract idea, courts “ask whether the focus of the
claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies
as an ‘abstract idea' for which computers are
merely invoked as a tool.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016), see
also In re TLI Commc'ns LLC Patent Litig., 823 F.3d
607, 612 (Fed. Cir. 2016) (“[A] relevant inquiry at
step one is to ask whether the claims are directed to an
improvement to computer functionality versus being directed
to an abstract idea.”) (internal citation omitted)
(internal quotations omitted). If “the plain focus of
the claim is on an improvement to computer functionality
itself, not on economic or other tasks for which a computer
is used in its ordinary capacity, ” it is not directed
to an abstract idea. Enfish, 822 F.3d at 1336.
Conversely, if the claims “are directed to a[n]
abstract idea of organizing information through mathematical
correlations with recitation of only generic gathering and
processing activities, ” or “recite a purely
conventional computer implementation of a mathematical
formula, ” it is directed to an abstract idea.
Id. at 1338-39. Additionally, “[w]here every
aspect of the patented method could be carried out manually,
courts tend to find that the method is too abstract to be
patentable.” SkillSurvey, Inc. v. Checkster,
LLC, 178 F.Supp.3d 247, 256 (E.D. Pa. 2016).
claims that “merely collect, classify, or otherwise
filter data” are patent-ineligible under § 101.
Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1327 (Fed. Cir. 2017); see also TLI, 823
F.3d at 611 (concluding that the patent was directed to the
abstract idea of classifying and storing digital images in
organized manner); Content Extraction, 776 F.3d at
1347 (concluding that the patent was “drawn to the
abstract idea of 1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that
recognized data in a memory”); Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348-49 (Fed. Cir. 2016) (concluding that
“content filtering system for filtering content
retrieved from an [i]nternet computer network” was
directed to an abstract idea); Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 Fed.Appx. 988, 992 (Fed.
Cir. 2014) (“the well-known concept of categorical data
storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that
information according to its classification, is an abstract
idea that is not patent-eligible.”).
The asserted claims of the '237 Patent are directed to an
argue that the asserted claims of the '237 Patent are
“directed to the abstract idea of organizing human
behavior.” Defs.' Mot. for J. On The Pleadings, Or
In The Alternative Summ. J. 16, Doc. 211. Specifically,
Defendants contend that the asserted claims are
“analogous to a medical professional checking a
patient's physiological heart data, looking for changes
and similarities in the data, filtering the data the medical
professional deems most valuable, and storing that data for
later use.” Defs.' Mot. for J. On The Pleadings, Or
In The Alternative Summ. J. 14, Doc. 211.
counter that the asserted claims of the '237 Patent are
not directed to an abstract idea because “each claim
recites a detailed, computer-implemented method governing the
flow and analysis of information between an ECG monitoring
instrumentation . . . and a remote medical receiver.”
Pls.' Opp'n To Defs.' Mot. J. Pleadings 11, Doc.
asserted claims of the '237 Patent recite systems and
techniques for monitoring “a cardiac biological
signal.” '237 Patent, Abstract, Ex. A. This
includes determining a “measure of merit” for
each monitored cardiac event. '237 Patent, 1:28-30, Ex.
A. The measure of merit encompasses both the severity of the
cardiac condition related to the event and the amount of
noise in the information describing the event. '237
Patent, 1:35-37, Ex. A. The measure of merit for each event
is subsequently compared with a merit criterion. '237
Patent, 1:56-61, Ex. A. Events that have measures of merit
meeting the merit criterion are transmitted to a remote
medical receiver for review by medical technicians; events
that have measures of merit that fail to meet the merit
criterion are discarded. '237 Patent, 1:56-61, Ex. A.
Claims 25 and 37 do not focus “on an improvement to
computer functionality itself, ” rather the asserted
claims are directed to the abstract idea of merely
collecting, classifying, or otherwise filtering data into
different groups based on identifying characteristics and
transmitting relevant information for review. '237
Patent, Abstract, Ex. A. Courts have found these types of
patent claims to be abstract ideas. Intellectual
Ventures, 850 F.3d at 1327; Content Extraction,
776 F.3d at 1351; Bascom Glob., 827 F.3d at 1348-49;
Cyberfone Sys., 558 Fed.Appx. at 990-92.
Content Extraction, the Federal Circuit found the
asserted claims invalid as patent ineligible under §
101. Content Extraction, 776 F.3d at 1351. The
claims asserted methods of “extracting data from hard
copy documents using an automated digitizing unit such as a
scanner, ” “recognizing specific information from
the extracted data, ” and “storing that
information in a memory.” Id. at 1344. In
conducting step one of its Alice analysis, the
Federal Circuit determined that the claims of the asserted
patent were generally directed to “the abstract idea of
1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a
memory.” Id. at 1347. The court explained that
“[t]he concept of data collection, recognition, and
storage is undisputedly well-known, ” and emphasized
that “humans have always performed these
functions.” Id. The court rejected
Plaintiff's argument that the claims were patent eligible
because they required hardware to perform functions that
humans cannot-processing and recognizing the stream of bits
output by the scanner. Id. Comparing the asserted
claims to “the computer-implemented claims in
Alice, ” the court concluded that the claims
were “drawn to the basic concept of data recognition
and storage, ” even though they recited a scanner.
the Plaintiff in Content Extraction, Plaintiffs have
failed to show that the focus of the asserted claims of the
'237 Patent are directed to an improvement in computer
functionality, as opposed to generic gathering and processing
activities that can be carried out manually. Representative
Claims 25 and 37 reflect analysis that medical professionals
have performed. As Plaintiffs explain, “the asserted
claims of the '237 Patent . . . enable accurate,
automatic review of a large volume of cardiac monitoring data
that was previously reviewed manually by trained
technicians. The claims save physicians or other trained
medical personnel from performing costly review of less
clinically-significant data.” Pls.' Opp'n To
Defs.' Mot. J. Pleadings 12, Doc. 224 (emphasis added).
The asserted claims of the '237 Patent are directed to
the abstract idea of collecting, classifying, and selectively
transmitting relevant data. Having made this determination,
the Court proceeds to the second step of the Alice
Alice Step Two Analysis: Inventive Concept
abstract idea does not, in and of itself, render it patent
ineligible. Alice, 134 S.Ct. at 2354. A patent that
contains an inventive concept will transform the claimed
abstract idea into a patent-eligible application.
Id. at 2357. To constitute an inventive concept, the
claimed abstract idea must be more than
“well-understood, routine, conventional
activity.” Mayo, 566 U.S. at 79.
“[G]eneric computer implementation” is
insufficient to transform an abstract idea into a
patent-eligible invention. Alice, 134 S.Ct. at 2352,
Use of generic computer technology does not render this
otherwise abstract idea inventive.
argue that the asserted claims of the '237 Patent add
nothing inventive to the underlying abstract idea because
they “merely automate or otherwise make more efficient,
traditional methods or techniques existing in the medical
field.” Defs.' Mot. for J. On The Pleadings, Or In
The Alternative Summ. J. 19, Doc. 211.
contend that the asserted claims of the '237 Patent
“do not merely computerize conventional techniques,
” but instead recite an inventive concept by
“creat[ing] a combined measurement of the severity of
adverse cardiac events together with the signal noise level,
to automatically identify less clinically-significant
events.” Pls.' Opp'n To Defs.' Mot. J.
Pleadings 16, Doc. 224. Plaintiffs further argue that the
asserted claims of the '237 Patent are inventive under
the “machine-or-transformation” test because the
claims are “tied to a particular machine or apparatus,
namely [ECG] monitoring instrumentation.” Pls.'
Opp'n To Defs.' Mot. J. Pleadings 17, Doc. 224.
Bascom Glob., the Federal Circuit found that patent
claims directed to “filtering Internet content”
were patent-eligible under § 101. Bascom Glob.,
827 F.3d at 1355. Although the Federal Circuit found the
asserted claims to be directed to the abstract idea of
filtering content, the court determined that the asserted
claims contained an inventive concept that transformed the
abstract idea into patent-eligible subject matter.
Id. at 1350-52. In so doing, the Federal Circuit
determined that the asserted claims do not: 1) “merely
recite the abstract idea of filtering content along with the
requirement to perform it on the Internet, or to perform it
on a set of generic computer components, ” and (ii)
“preempt all ways of filtering content on the
Internet” or on generic computer components performing
conventional activities. Id. at 1350. The court
focused on the technical aspect of the claimed invention and
stated that while “[f]iltering content on the Internet
was already a known concept,  the patent describes how its
particular arrangement of elements is a technical improvement
over prior art . . . filters [that] were either susceptible
to hacking and dependent on local hardware and software, or
confined to an inflexible one size-fits-all scheme.”
Id. at 1350. The Federal Circuit stated that
“[b]y taking a prior art filter solution (one-size
fits-all filter at the ISP server) and making it more dynamic
and efficient (providing individualized filtering at the ISP
server) the claimed invention represents a software-based
invention[ ] that improve[s] the performance of the computer
system itself.” Id. at 1351.
the claims in Bascom Glob., representative Claims 25
and 37 add nothing inventive to the abstract idea of
collecting, classifying, and selectively transmitting
relevant data. The claim elements, individually or
collectively, recite performing the abstract idea with
conventional technology and fail to provide any specific,
inventive technological improvement.
25 and 37 describe “[a]n article comprising one or more
machine-readable storing instructions operable to cause one
or more machines to perform operations for monitoring a
cardiac biological signal using [ECG] instrumentation.”
'237 Patent, 17:40-44; 18:59-63, Ex. A. Notably, a
“machine-readable medium” is described as
“any computer program product, apparatus and/or device
. . . used to provide machine instructions and/or data to a
programmable processor” and the term
“‘machine-readable signal' refers to any
signal used to provide machine instructions and/or data to a
programmable processor.” '237 Patent, 14:17-31, Ex.
A. The claims do not provide any specific, inventive
technological improvement, but rather provide processing
instructions for use on any type of “machine-readable
medium.” The '237 Patent discloses that a
“vari[ety] of implementations of systems and
techniques” can be used to implement the Patent's
claimed process. '237 Patent, 14:6-57, 14:32-57, Ex. A.
Reciting such conventional computer components is
insufficient to transform an abstract idea into a
patent-eligible invention. Alice, 134 S.Ct. at 2352,
The asserted claims of the '237 Patent do not satisfy the
the machine-or-transformation test, a claimed process is
patent eligible under § 101 if “it is tied to a
particular machine or apparatus” and “the use of
a specific machine or transformation of an article . . .
impose meaningful limits on the claim's scope.”
SiRF Tech., Inc. v. Int'l Trade Com'n, 601
F.3d 1319, 1332 (Fed. Cir. 2010) (internal citation omitted).
“In order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a
significant part in permitting the claimed method to be
performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more
quickly.” Id. at 1333. “[S]imply
implementing a mathematical principle on a physical machine,
namely a computer, [i]s not a patentable application”
of an otherwise abstract idea. Alice, 134 S.Ct. at
2357 (internal citation omitted).
SiRF Tech., the Federal Circuit held that certain
patents related to global positioning systems
(“GPS”) were patent-eligible under § 101.
SiRF Tech., 601 F.3d at 1333. The patent claims were
directed to a method of “estimating a plurality of
states associated with a satellite signal receiver” and
“forming a dynamic model relating the plurality of
states, the dynamic model operative to compute position of
the satellite signal receiver.” Id. at 1332.
In concluding that the patents satisfied the
machine-or-transformation test, the court found that the
“GPS receiver” was held to be a “particular
machine” that was “integral to each of the claims
at issue.” Id. The court emphasized that the
“methods at issue could not be performed without the
use of a GPS receiver, ” and there was no evidence that
“the calculations [ ] c[ould] be performed entirely in
the human mind.” Id. at 1332-33. Because the
claimed method could not be “performed without a”
GPS receiver, the receiver was indispensable to the patented
reasons stated above, the '237 Patent fails under the
machine-or-transformation test. Unlike the claims in SiRF
Tech., Plaintiffs' claims are not tied to any
particular machine that is integral to the claimed systems
and techniques for monitoring cardiac biological signals. The
asserted claims merely recite conventional computer
components for “permitting a solution to be achieved
more quickly” through a machine-readable medium that
can be “any computer program product, apparatus and/or
device.” SiRF Tech., 601 F.3d at 1333. Because
the asserted claims of the '237 Patent are not directed
to a specific machine, they do not contain an inventive
concept sufficient to transform the abstract idea into
patent-eligible subject matter. For these reasons, the
'237 Patent is directed to an abstract idea and the
asserted claims do not add an inventive element. Accordingly,
the asserted claims of the '237 Patent are
patent-ineligible under § 101.
The '207 Patent
argue that Plaintiffs are collaterally estopped from alleging
infringement of claims 1, 2, 8, 9, 10, 21, 22, and 23 of the
'207 Patent following the Massachusetts District
Court's decision in CardioNet, LLC v. InfoBionic,
Inc. 348 F.Supp.3d 87 (D. Mass. 2018); Defs.' Reply
in Supp. of Mot. for J. On The Pleadings, Or In The
Alternative Summ. J. 2, Doc. 228. In that case, in ruling on
defendant's motion to dismiss, Judge Talwani determined
that claims 1, 2, 3, 7, 10, 11, 12, and 22 of the '207
Patent were ineligible under § 101. InfoBionic,
348 F.Supp. at 89. Judge Talwani concluded that “the
'207 patent is directed to an abstract idea and the
asserted claims do not add  inventive elements.”
Id. at 98.
respect to unadjudicated claims 8, 9, 21, and 23, Defendants
maintain that “they present identical issues” and
are representative of Claim 1, which was previously
invalidated in InfoBionic. Defs.' Reply in Supp.
of Mot. for J. On The Pleadings, Or In The Alternative Summ.
J.6, Doc. 228.
argue that collateral estoppel does not apply to the asserted
claims of the '207 Patent because the Massachusetts
District Court did not adjudicate claims 8, 9, 21, and 23 of
the '207 Patent. Pls.' Opp'n To Defs.' Mot.
J. Pleadings 17, Doc. 224. Plaintiffs further argue that
“the Massachusetts court based a substantial portion of
its opinion on the alleged breadth of  claims [1, 2, 3, 7,
10, 11, 12, and 22]-a rationale that cannot apply to claims
8, 9, 21, and 23.” Pls.' Opp'n To Defs.'
Mot. J. Pleadings 17, Doc. 224. Finally Plaintiffs contend
that collateral estoppel should not apply because an appeal
is pending. Pls.' Opp'n To Defs.' Mot. J.
Pleadings 18-19, Doc. 224.
doctrine of collateral estoppel-also known as issue
preclusion-precludes a party from litigating an issue that
has previously been decided in a former judicial proceeding.
Scooper Dooper, Inc. v. Kraftco Corp., 494 F.2d 840,
844 (3d Cir. 1974). In Blonder-Tongue, the Supreme
Court unanimously held that where a patent has been declared
invalid in a prior adjudication, an unrelated defendant in a
subsequent action for infringement may assert a collateral
estoppel defense based on the previous judgment.
Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313, 350 (1971); Kaiser Indus. Corp. v. Jones
& Laughlin Steel Corp., 515 F.2d 964, 976 (3d Cir.
1975). In its ruling, the Supreme Court created “a
pragmatic formula that harmonized considerations of due
process and judicial economy. It was aimed at producing
substantial justice while avoiding needlessly repetitious
litigation.” Kaiser Indus. Corp., 515 F.2d at
invoke the doctrine of collateral estoppel as a defense, a
defendant must establish that: (1) the identical issue was
previously adjudicated; (2) the issue was actually litigated;
(3) the previous determination of the issue was necessary to
the decision; and (4) the party being precluded from
relitigating the issue was fully represented in the prior
action. Stone v. Johnson, 608 Fed.Appx. 126, 127 (3d
Cir. 2015). The Third Circuit has also considered whether the
issue was determined by a final and valid judgment. Jean
Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., 458
F.3d 244, 249 (3d Cir. 2006).
Claims 1, 2, 10, and 22
light of the Supreme Court's holding in
Blonder-Tongue, this Court finds that Plaintiffs are
collaterally estopped from alleging infringement of claims 1,
2, 10, and 22 of the '207 Patent because Judge Talwani of
the Massachusetts District Court ruled that these claims are
patent ineligible under § 101. InfoBionic, 348
F.Supp.3d at 98. With respect to claims 1, 2, 10, and 22, the
only element of collateral estoppel that Plaintiffs dispute
is whether the InfoBionic decision constitutes a
final judgment. Thus, the Court's discussion focuses on
The issue was determined by a final judgment.
is no bright-line rule regarding what constitutes a
“final judgment” for issue preclusion purposes.
Free Speech Coal., Inc. v. AG of the United States,
677 F.3d 519, 541 (3d Cir. 2012). However, “a prior
adjudication of an issue in another action must be
sufficiently firm to be accorded conclusive effect.”
Id. (internal quotations omitted). When determining
whether a prior ruling was sufficiently firm for preclusion
purposes, courts consider the following factors: (1) whether
the parties were fully heard; (2) whether a reasoned opinion
was filed; and (3) whether that decision could have been, or
was, appealed. Id. None of these factors alone are
Court finds that the Massachusetts District Court's
decision-concluding that Plaintiffs' asserted claims in
the '207 Patent are patent-ineligible-constitutes a final
judgment for collateral estoppel purposes; the parties were
fully heard on the issues, the Massachusetts District Court
issued a well-reasoned opinion, and Plaintiffs had a full and
fair opportunity to litigate their claims.
Plaintiffs were fully heard regarding claims 1, 2, 10, and 22
of the '207 Patent. Plaintiffs were represented by
competent counsel before the Massachusetts District Court and
had a full opportunity to brief the issues and present oral
argument. Second, the Massachusetts District Court issued a
well-reasoned opinion in support of its decisions. The
Massachusetts District Court conducted its Alice
analysis and clearly articulated its basis for concluding
that claims 1, 2, 10, and 22 of the '207 Patent are
patent-ineligible because “Plaintiffs' asserted
claims are not directed to any improvement in the computer
technology itself, but rather seek to improve cardiac
monitoring instead through the abstract idea of measuring the
variability of heartbeats.” InfoBionic, 348
F.Supp.3d at 98. Third, Plaintiffs have appealed the
Massachusetts District Court's decision to the Federal
Circuit. In re Brown, 951 F.2d 564, 569 (3d Cir.
1991) (internal citation omitted) (“In determining
whether the resolution was sufficiently firm, the second
court should consider whether . . . that decision could have
been, or actually was, appealed.”).
contention that collateral estoppel should not apply because
the issues have been appealed is unpersuasive. Pls.'
Opp'n To Defs.' Mot. J. Pleadings 18-19, Doc. 224.
The collateral estoppel effect of a prior district court
decision is not impacted by the fact that an appeal has been
taken from the decision. See Pharmacia & Upjohn Co.
v. Mylan Pharm., Inc., 170 F.3d 1373, 1380-81 (Fed. Cir.
1999) (“[T]he law is well settled that the pendency of
an appeal has no effect on the finality or binding effect of
a trial court's holding.”); Rice v. ...