Using the Intrinsic Record to Resolve Alice Step One
Before Dyk, Plager, and Stoll. Dyk dissenting in part. Appeal from the District of Massachusetts.
Summary: Alice step one is a threshold inquiry that can be resolved by analyzing the intrinsic record without considering the prior art.
CardioNet’s patent discloses systems and methods for detecting certain heart conditions based on evaluating the variability of an irregular heartbeat. The district court granted Infobionic’s motion to dismiss finding that the claims were directed to an abstract idea under Alice step one. CardioNet appealed.
The Federal Circuit reversed, reasoning that the district court relied on “the incorrect assumption that the claims [were] directed to automating known techniques.” Looking to the intrinsic record, the Federal Circuit found no evidence that doctors used the claimed techniques, but rather that the written description disclosed material advantages of the claimed invention to the field of cardiac monitoring technology.
The Court then determined that it could resolve Alice step one as a matter of law without remanding to assess the state of the art. The Court distinguished Alice step one, which only determines what the claims are “directed to,” from §§ 102 and 103, which require comparison to the prior art for definitive resolution. The Court further held that it “need not consult the prior art to see if, in fact, the assertions of improvement in the patent’s written description are true.”
Judge Dyk concurred in the result but dissented to the extent the majority limited the use of extrinsic evidence to establish that a practice is longstanding.
Editor: Paul Stewart