Patent Eligibility: No Patenting a Correlation

by Dennis Crouch

iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760 (Supreme Court 2021) [Petition]

iLife’s recent petition for writ of certiorari matches those found in American Axle’s pending petition:

1. What is the appropriate standard for determining whether a patent claim is  directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

The petition’s linkage is strategic since in Am. Axle the Supreme Court has asked the U.S. Government (Solicitor General) to offer its views on these same questions.  The SG’s office (under president Trump) previously suggested that the Court should rehear a case on eligibility because of the ongoing uncertainty and resulting market disruption.

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iLife’s asserted U.S. Patent No. 6,864,796 covers a mobile device having a motion detection system to evaluate body movement and determine whether the movement “is within environmental tolerance.”  The patent makes clear that “methods for determining specific movements of a body that use a variety of devices, apparatus and systems are, generally speaking, known.”  The improvement then is the ability to determine whether any particular movement is outside of a normal tolerance and perhaps indicative of injury:

[The prior art is not] capable of evaluating body movement to determine whether the [movement] is normal or abnormal; and if abnormal, whether such movement is so abnormal to be beyond tolerance, for instance, to be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.

‘796 Patent.  Nintendo challenged the claims via IPR, but the PTAB sided with iLife. The IPR challenge focused on obviousness and anticipation.

Later in court, Nintendo argued that the claims were invalid for lack of enablement and written description, but the jury denied those defenses and instead awarded iLife $10 million in infringement damages.

Finally though the district court issued a post-verdict judgment as a matter of law — holding the claims ineligible as directed to the abstract idea of “gathering, processing, and transmitting information.” On appeal, the Federal Circuit affirmed, holding that the claims recite the abstract idea of  “a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.” Stripped away from pseudo-technical language, the court found this simply gathering, processing, and transmitting information.”

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At its heart, I see the invention here as a method of diagnosis much like that rejected in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).  In Mayo, the level of 6-thioguanine was measured to determine whether the patient needed more thiopurine drug.  Although the link between body-levels of 6-thioguanine and thiopurine was an important discovery, that link was an unpatentable law of nature.  In iLife, the correlation between certain accelerometer measurements and distress of a human body. But, the result is the same — that correlation itself cannot be patentable.