United States District Court, E.D. Texas, Marshall Division
ORDER ADOPTING REPORTS AND RECOMMENDATIONS OF UNITED
STATES MAGISTRATE JUDGE AND GRANTING MOTIONS TO
W. SCHROEDER III UNITED STATES DISTRICT JUDGE.
the Court are two Reports and Recommendations of United
States Magistrate Judge Roy S. Payne. The first recommends
that Defendant DeVilbiss Healthcare, LLC's Motion to
Dismiss Under Fed.R.Civ.P. 12(b)(6) (Case No. 2:16-cv-544;
Docket No. 15) be granted because the claims of asserted U.S.
Patent No. 6, 612, 985 (“the '985 Patent”)
are drawn to ineligible subject matter under 35 U.S.C. §
101. Docket No. 66 (“Rep.”) at 1. The second
recommends that motions to dismiss filed by other Defendants
in this consolidated action also be granted on the same
grounds. Docket No. 69 at 1. Plaintiff My Health,
Inc. (“My Health”) has filed written objections
to both Reports (Docket Nos. 72 (“Obj.”) and
The Court reviews the objected-to portions of the Reports
de novo. 28 U.S.C. § 636(b)(1)(C).
Report, the Magistrate Judge held that claim 1 of the
'985 Patent is representative. Rep. at 3. At step one of
the Alice inquiry, he found that claim 1 is directed
to the abstract idea of a “method for tracking
compliance with treatment guidelines.” Id. At
step two of the Alice inquiry, the Magistrate Judge
held that claim 1 does not provide an inventive concept under
any plausible construction. Id. at 6. Accordingly,
he found this case can be adjudicated without the benefit
claim construction. Id. He found the '985 Patent
is drawn to ineligible subject matter and recommended that
the Motions to Dismiss be granted. Id. at 7.
objections, My Health argues that Defendants have not
established the representativeness of claim 1. Obj. at 2. My
Health denies that any claim of the '985 Patent is
directed to an abstract idea. Id. at 5-6. My Health
argues that dismissal is inappropriate in this case because a
factual dispute remains as to the scope of preemption and
because the Court has not construed the claims. Id.
at 6-8. Finally, My Health argues that the claims of the
'985 Patent provide an inventive concept at least because
claims 1-3 cannot be performed entirely by humans and because
claim 7 and its dependents explicitly require a computer.
Id. at 8-9.
reasons that follow, Plaintiff's objections are
OVERRULED, and the Motions to Dismiss are GRANTED.
claim 1 is representative of the other claims of the '985
Patent because the other claims in the '985 Patent do not
differ significantly from claim 1. See Mayo
Collaborative Servs. V. Prometheus Labs., Inc.,
132 S.Ct. 1289, 1295 (2012) (taking as representative claim 1
or the patent asserted in that case and ignoring the
differences between claim 1 and other claims as irrelevant to
§ 101 analysis). Plaintiff's objections display the
nine claims of the '985 Patent as three sets of three
claims (i.e., 1-3, 4-6 and 7-9). Obj. at 3-5. The three sets
are almost identical to one another. See Id. They
differ only to the extent that claim 1 is drawn to a method;
claim 4, to a system; and claim 7, to a computer readable
medium. These differences, by themselves, are immaterial to
the § 101 analysis. Alice Corp. v. CLS Bank
Int'l, 134 S.Ct. 2347, 2353, 2359 (2014) (holding
invalid under § 101 claims to a method, system and
computer-readable medium based on analysis of a
representative method claim).
the claims of the '985 Patent are directed to the
abstract idea of tracking compliance with treatment
guidelines. The claims of the '985 Patent involve the
concept of tracking compliance with treatment guidelines as
shown by the preambles of the independent claims, each of
which announces that the method, system or computer readable
medium is “for tracking compliance with treatment
guidelines.” E.g., '985 Patent at col.
15:52-53. Plaintiff argues that tracking compliance with
treatment guidelines is not a “fundamental economic or
longstanding commercial practice.” Obj. at 6. Even if
not a fundamental practice in business, tracking compliance
with treatment guidelines is a fundamental and longstanding
practice in medicine. That a practice may be longstanding in
medicine as opposed to in business does not make it any less
an abstract idea.
conclusion that the '985 patent is directed to an
abstract idea is confirmed by the fact that it is does not
improve the functioning of a computer. See Apple, Inc v.
Ameranth, Inc., 842, F.3d 1229, 1241 (Fed. Cir. 2016)
(“Alternatively, the claims are not directed to a
specific improvement in the way computers operate.”).
In its objections, My Health writes, “The '985
patent claims are not abstract because they are limited to a
‘new and useful' application of computing and
networking equipment to improve remote health care
monitoring.” Obj. at 6. My Health admits that the
purported improvement of the '985 Patent is to
“remote health care monitoring” and not to the
“computing and networking equipment.” If the
claims recite a “new and useful application” as
My Health suggests, the limitations of the claims will reduce
the abstract concept to a patent-eligible application. But
whether the claims are sufficiently limited is addressed in
step two of the Alice inquiry. In sum, the Court
agrees with the Magistrate Judge that the claims of the
'985 Patent are directed to an abstract idea.
whether the claims of the '985 Patent “pre-empt all
forms of navigating a computer network, ” Obj. at 7, is
not a question of fact material to the present analysis.
“Navigating a computer network” is not the
abstract idea to which the claims are directed, and the scope
of the claims' preemption of that idea is immaterial.
Moreover, “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015), cert. denied, 136 S.Ct. 2511
(2016). My Health's objection is therefore without merit.
claim construction is not necessary to find the '985
Patent invalid under § 101 at the motion-to-dismiss
stage. The Magistrate Judge found that no plausible
construction of the claims rescues their patent-eligibility.
Rep. at 6. Although My Health objects to this conclusion, it
fails to put forward any proposed construction of any term in
the '985 Patent-much less a construction that is both
plausible and cures the abstractness of the
claims. Although legitimate claim-construction
disputes may make adjudication of patent eligibility
inappropriate on a motion to dismiss, see Rockstar
Consortium U.S. LP, Inc. v. Samsung Elecs. Co., Case No.
2:13-cv-894-JRG, 2014 WL 1998053, at *3 (E.D. Tex. May 15,
2014) (citation omitted), no such dispute is presented in the
case at bar.
the Magistrate Judge correctly found that the claims of the
'985 Patent do not provide an inventive concept. My
Health's objection to this finding centers on the idea
that computers are necessary to the claims such that the
“claims 1-3 . . . cannot be accomplished by a human
mind” and “the computer is integral [to] and
required of [claim 7].” Obj. at 9. The objection is
without merit because the mere involvement of a generic,
general-purpose computer is insufficient to provide an
inventive concept. Alice, 134 S.Ct. at 2358-59.
Although the capacity to be performed entirely by a human
mind is a strong indicator of the patent-ineligibility of a
claim, My Health provides no authority supporting the
converse proposition that a single method step that may not
be performable by a human mind bars a finding of
ineligibility. My Health does not persuade the Court that the
'985 Patent provides a non-routine or non-generic
arrangement of computer components or that the limitations of
the claims otherwise meaningfully limit the abstract concept
of tracking compliance with treatment guidelines.
made a de novo review of those portions of the
Magistrate Judge's Reports and Recommendations (Docket
Nos. 66 and 69) to which Plaintiff has filed written
objections, the Court has found no error. Accordingly, the
Magistrate Judge's findings of fact and conclusions of
law are ADOPTED as those of the Court.
before the Court is Defendant MyNetDiary, Inc.'s Motion
to Dismiss (Case No. 2:16-cv-866, Docket No. 12). That Motion
also requests that the Court dismiss the complaint because
the '985 Patent is drawn to ineligible subject matter.
For the same reasons ...