Femto-Sec Tech, Inc. v. Lensar, Inc. (C.D. Cal. 2016)

Patent Having Claims That Apply Law of Nature Is Patent-Eligible

By Joseph Herndon --

On June 8, 2016, the U.S. District Court for the Central District of California issued an order denying a motion to dismiss, and found that U.S. Patent No. 5,720,894 is directed to patent-eligible subject matter in a case captioned Femto-Sec Tech, Inc. v. Lensar, Inc.

Lensar argued that the '894 Patent is directed to a "natural phenomena and laws of nature," but the Court made it clear that a patent with claims that apply laws of nature should not be considered patent-ineligible as being directed at that law of nature.

The '894 Patent is directed to the field of ultrashort pulse duration laser systems suitable for material and biological tissue processing.  The patent purportedly improved upon the prior art of the use of lasers as a therapeutic and preventive tool in various fields, such as surgery, by increasing ablation efficiency while minimizing collateral damage to adjacent material.

The '894 Patent recites two independent claims, and claim 1 is representative and reproduced below.

1.  A method for selective material removal processing comprising:
    providing a pulsed laser;
    operating said laser so as to produce a pulsed output beam, the beam comprising individual pulses each having a pulse duration in the range of from about 1 femtosecond to about 100 picoseconds;
    directing said pulsed output beam onto a target material from which removal is desired, wherein each pulse interacts with a thin layer portion of said material so as to form a plasma;
    allowing said formed plasma to decay, such that said material portion is removed; and
    repeating said plasma formation step at a pulse repetition rate greater than 10 pulses per second until a sufficient depth of material has been removed with substantially no transfer of thermal or mechanical energy into the remaining material and substantially no collateral damage thereto.

Nuijten Standard

An invention is patent-eligible if it claims a new and useful process, machine, manufacture, or composition of matter, according to 35 U.S.C. § 101.  Claims that encompass transitory forms of signal transmission (e.g., transitory electrical and electromagnetic signals propagated through some medium) are invalid because those transitory embodiments are not directed to statutory subject matter.  In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007).  A transitory signal per se is not one of the four categories of patentable subject matter.

Lensar initially provided arguments questioning whether or not a laser beam is among one of the statutory categories, and submitted that the laser beam is more analogous to a signal per se.  The Court, however, found that neither of the independent claims of the '894 Patent purports to claim a laser beam per se.  Instead, independent claim one clearly claims only a "method" which includes, as a required step in the process, the use of a "pulsed laser."  The method claim is a "process" under 35 U.S.C. § 101 and is, thus, directed to statutory subject matter.

The Court noted that contrary to Lensar's assertion, the Federal Circuit in Nuijten did not find the electromagnetic signal to be a patent-ineligible natural phenomenon.  Courts applying Nuijten do not strike patents that improperly claim natural phenomenon, but rather, patents that improperly claim transitory signals.  Here, because no signal is claimed, the Nuijten arguments were not relevant.

Alice Standard

Laws of nature, natural phenomena, and abstract ideas are not patentable.  The two-step Alice test is used for patent eligibility purposes.  First, the Court must determine whether the claims at issue are directed to one of those patent-ineligible concepts, and if so, then the second step requires the Court to search for an inventive concept.

Lensar argued that the claims are directed toward natural phenomena and the laws of nature.  The Court found that Lensar failed to indicate what portion of the patent claims appear to claim for itself a particular law of nature, and rather, found that the '894 patent does not, in fact, recite a law of nature.

In Alice, the Supreme Court reiterated that a "patent is not rendered ineligible for patent simply because it involves" a patent-ineligible concept.  Instead, a patent is ineligible if it is directed to the patent ineligible concept, for example, by claiming an essential building block of human ingenuity or a scientific principle.

Here, the Court found that the claims of the '894 Patent are not directed towards the broad, generalized use of electromagnetic spectrum.  Instead, the '894 Patent has claimed a particularized, specific use of a specific range of the electromagnetic spectrum; a use that the '894 Patent claims has particular and useful effects.  The Court further iterated that the plain focus of the claim is not directed, broadly, to laser beams, but instead the focus of the claim is the operation of a pulse laser of an ultrashort duration (between a femtosecond (quadrillionth of a second) and 100 picoseconds (trillionth of a second)) repeatedly to achieve the desired results of material removal with substantially no collateral damage.

The Court made clear that although this invention, like all patent-eligible inventions, may at some level "apply laws of nature," that does not mean that the present invention is directed at that law of nature.

The Court also noted that Lensar failed to show how ultrashort pulse laser beams are naturally occurring phenomena.  In fact, the '894 Patent indicates that the ultrashort pulse laser beams have to be generated from a specialized piece of equipment.  The Court found that the discovery that the material-removing properties of ultrashort pulsed lasers have beneficial effects is "not nature's handiwork" but rather the work of the inventor of the subject matter here.

Although the Court concluded that the claims of the '894 Patent survive scrutiny under step one of the Alice analysis, the Court also determined that the claims of the '894 Patent would also survive under step two of the Alice framework.  The Court highlighted the fact that use of ultrashort pulsed beams at least improves the functionality of a laser for a specific, particularized purpose:  material removal.

The Court thus concluded that the claims of the '894 Patent are patent eligible.  The Court here provides a nice example to push-back on the unfounded allegations of § 101 attacks, and made it clear that a patent with claims that apply laws of nature should not be considered patent-ineligible as being directed at that law of nature.

Order Denying Defendant's Motion to Dismiss by Honorable James V. Selna

Comments

[Paul Cole]

Welcome decision.

But if you look at the patent, the invention is all about dentistry. On a quick scan I could not see a single claim specifying that the material to be removed is the material of a human or animal tooth. Is the specified laser output equally suitable for other treatments e.g. in dermatology?

A major recurrent fault in parent drafting, in the ceaseless quest for spurious generality, is to leave out a claim specifying the technical field which the invention is all about. In this case the invention is all about dentistry but the claims say nothing abut tooth enamel. Very famously, the Windsurfing patent did not specify that the hull was a surfboard, and even when the patent was reissued in the US the patentees STILL did not include a claim to a surfboard hull.

[EG]

Hey Joseph,

Not even close on the patent-eligibility issue. Glad this district court saw through the "smoke and mirrors" asserted by the defendant.

[Atari Man]

It's great to see another island of sanity among the judges handling this patent-eligibility mess, too bad it's not a whole continent.

Having made it over this hurdle, it will be interesting to see how the patentee proves the presence of the "wherein each pulse interacts with a thin layer portion of said material so as to form a plasma" limitation in the accused infringing process. But maybe that's easier to prove than I think.

[skeptical]

Mr. Cole,

I am surprised to read your comment, knowing as I do that you are aware of the "patent profanity" created by the Supreme Court when it comes to "fields of technology." You act like adding such has any actual "merit," when the Court had made clear that such has no "merit."

Do not blame "scriveners" for the lessons they have learned from the Court.

[Paul Cole]

@Skeptical

No profanity would have been involved by the inclusion of a dependent claim 11:

The method of claim 1, wherein the material is tooth enamel.

Addition of such a claim would have had the benefit of causing the patent draftsman to think carefully what other materials needed to be covered. Nothing would have been lost by its inclusion. And by the time that full trial is reached, the patentees might have been very glad that this claim had been included, depending on what prior art in distant technical fields had come to light.

[skeptical]

Mr. Cole,

I fear that you missed the point of my post: the Court has basically stated that such a "field of use" limitation is meaningless when they look at claims with their thumbs on the scale of eligibility (or, if you prefer, their fingers in the wax nose of 101).

If an enforcing court is not going to use such a "limitation" to save a claim, and thus the only purpose of such a limitation is to reduce the description of the invention, weighing the benefit/risk of including such a limitation simply points to the opposite direction of your conclusion above.

Further, the increased powers provided by the KSR decision to PHOSITA make your concern about sequestering a claim from "distant technical fields [coming] to light" a nullity: you are not going to be protected because of the added field of use limitation.

You may not like this (hence your labeling such as "a major recurrent fault," but your label merely reflects your opinion of a desired state that is NOT supported by the effects of court decisions (and hence my label of patent profanity).

To me, this is one of those things that reflect (not necessarily in a bad way) your tendency to be a bit overly optimistic about the restraint of courts to NOT be looking to limit the reach of patents.

As I have pointed out though on many occasions, such "optimism" is just not warranted. The Court is going to treat our efforts as somewhat baseless scrivining anyway and we really do have to play the game that they lay out - seeking to optimize our client's inventions.

And yes, that does mean things like removing phrases, which while you may feel may be "helpful," are in the final analysis** simply not that helpful.

**I will add a caveat here that the removal of the field of use limitation should not happen without thought or care, and that the use of dependent claims for a spectrum of coverage may "properly" address your concern. But to have your proffered suggestion in the independent claim is rather the opposite of the label that you would use.

[Paul Cole]

@ Skeptical

Please note that my recommendation was for dependent claim 11, not claim 1. And the invention is disclosed for other surgical procedures. So a claim to biological material would also be good.

Field of use is a key parameter in European practice, and is very helpful to the prosecution attorney. But you have to build the right features into the description and claims to make it work (which we do without patent profanity).

[skeptical]

Thank you for pointing that out Paul - so my caveat resonates with you.

But I still think that you miss the point of my posts. Adding the fact that your application supports the field of use is rather a non sequitur to what OUR Court has done (in a profane manner).

I do hope you realize that your comment about Europian practice does not matter one whit when we are discussing US practice (another non sequitur of yours).

These are the types of comments that reinforce my post above - your "optimism" seems flavored by these NON-US items and this makes your posts concerning US law come across as more than a bit naive (no disrespect intended - I do believe that your heart is in the right place).

[Paul Cole]

@ Skeptical

Your last comment raises an important practical point.

Especially in pharmaceutical and biotech patent cases, the importance of the invention does not stop at the US border. Protection is likely to be required at the EPO, in China, India, Japan, Korea, Australia, New Zealand, South Africa and other countries.

In my experience, a patent specification once drafted is almost never rewritten for other countries and the US text is filed as a PCT application (perhaps with some updates from the original filing) and then nationalised in the various national or regional patent offices. UK and European practitioners are well used to drafting texts which will have a good chance of working well on a world-wide basis. With the US in mind we do our best to avoid patent profanity. With Europe in mind we define field of use, make sure we have some field-of-use claims and ensure that there is sufficient information in the specification that the relevant technical problem can be reconstructed before the EPO. With Japan in mind we make sure that the specification contains sufficient information to support the important dependent claims. We bear in mind the wisdom of following PCT Rule 5(1)(a) (remembering that the PCT was a treaty primarily inspired by the US:

"The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any....;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used..."

These requirements are not only desirable under the PCT for International patent filings but matters which if we all observe (with due caution as to patent profanity in the US) will give us and our clients good results in the cases we file and prosecute. To European practitioners the rightful concern about patent profanity often leads to vague and difficult patent specifications and omission of important information and claims of foreseeable importance in prosecution and subsequent litigation. Avoidance of patent profanity should not lead to paranoid omission of important subject matter and claims.

[skeptical]

Thank you Paul - your last paragraph hits the nail on the head with "rightful," but (once again) you lean too much on the "should not" when it is plainly clear - (as in the number of times that I can say "I told you so" with how 101 is being used) - not does lead to, but MUST lead to our serving our clients by "better" scrivining.

It is simply a fallacy to say that one can ignore the very real world effects of patent profanity. This is NOT to say that important subject matter and claims are necessarily omitted - it is to say that even such things as you discuss MAY NOT save you here in the States.

(also, not everyone is a "world filer" - and there are plenty of folks who only aim for US protection)