LEE YEAKEL, District Judge.
Before the court in the above-styled and numbered cause are Defendant's Motion for Summary Judgment of Invalidity Based on 35 U.S.C. § 101 filed December 9, 2014 (Clerk's Doc. No. 47), Plaintiff's Response to Defendant's Motion filed January 15, 2015 (Clerk's Doc. No. 55), Defendant's Reply in Support of Its Motion filed January 26, 2015 (Clerk's Doc. No. 56), Plaintiffs Notice of Supplemental Authority filed February 3, 2015 (Clerk's Doc. No. 57), and Defendant's Response to Plaintiffs Notice of Supplemental Authority filed February 6, 2015 (Clerk's Doc. No. 59). The court held a hearing on the summary-judgment motion on March 23, 2015, at which both parties appeared through counsel.
After considering the motion, responses, reply, supplemental authority, arguments of counsel, the patent-in-suit, the entire case file, and the applicable law, the court will grant Defendant's motion for summary judgment of invalidity.
Plaintiff Becton, Dickinson and Company ("Becton")
In addition to opposing the motion on substantive grounds, Becton argues that this court should postpone judgment on Baxter's motion until after claim construction.
According to the abstract, the '887 Patent is generally directed toward "a method and a system for remotely supervising and verifying technical pharmacy functions performed by a non-pharmacist located in an institutional pharmacy." The invention is summarized as "providing certain pharmacy services to institutionalized patients at an institution where a live pharmacist is hot available" such that an "institutional pharmacy and a remotely located pharmacist are linked via wired or wireless telecommunication systems in a manner that enables the pharmacist to remotely supervise and verify that pharmacy functions are properly performed by non-pharmacist personnel." '887 Patent 2:13-20.
Claim 1 of the '887 Patent is representative for the purposes of the court's Section 101 analysis:
'887 Patent 17:37-18:10. Independent Claim 16, the only other independent claim in the '887 Patent, recites the elements of Claim 1, with the exception of the images stored on a website, and adds one additional requirement:
Id. at 19:38-45.
Under Federal Rule of Civil Procedure 56(a), summary judgment may be granted only if all the submissions of the parties taken together "show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (internal citation and quotation marks omitted); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party bears the initial burden of demonstrating "the absence of a
"Whether a claim is drawn to patent-eligible subject matter under [Section] 101 is a threshold inquiry[.]" In re Bilski, 545 F.3d 943, 950 (Fed.Cir.2008) ("Bilski I"), affirmed sub nom. Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) ("Bilski II"). If a claim is not drawn to patent-eligible subject matter, it "must be rejected even if it meets all the other legal requirements of patentability." Id. The determination of whether a claim is drawn to patent-eligible subject matter is a pure question of law. See Fort Properties, Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1320 (Fed.Cir. 2012); see also Bilski I, 545 F.3d at 951 (explaining that patent validity under Section 101 is "issue of law").
Section 101 of the Patent Act defines patentable subject matter: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. However, Section 101 also "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice, 134 S.Ct. at 2354 (internal quotations and citation omitted). "[T]he concern that drives this exclusionary principle [is] one of pre-emption." Id. (citing Bilski II, 561 U.S. at 611, 130 S.Ct. 3218).
The Supreme Court has stressed the need to "tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept." Alice, 134 S.Ct. at 2354 (internal citations omitted).
In order to guide courts in this inquiry, the Supreme Court established a "framework for distinguishing patents that claim... abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, `what else is there in the claims before us?' ... to determine whether the additional elements `transform the nature of the claim' into a patent-eligible application." Id. at 2355 (internal citations omitted). Step two of the analysis is a "search for an `inventive concept' — i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." Id. (internal quotations and citations omitted).
Broadly speaking, Baxter argues that all the asserted claims of the '887 Patent fall outside Section 101 eligibility because they teach the "abstract ideas of `supervision' and `verification' of pharmacy functions." According to Baxter, "[s]upervision and verification are even more fundamental `building blocks of human ingenuity' than the' intermediated settlement'" patent which was found patent ineligible in Alice. Moreover, Baxter argues, the '887 Patent's "addition of `off-the-shelf technology
In response, Becton argues that the claims are not merely directed at the abstract concept of supervision and verification because they recite additional "substantial structural elements" and "particularized implementations of the inventive concept in a specific sequence." Becton contends that Baxter's characterization of the thrust of the patent is oversimplified and that the claims go "far beyond the bare concepts of `supervision and verification.'" Becton also argues that the '887 Patent is not abstract because the Supreme Court has limited the abstractness inquiry to "only ... a handful of subject matter areas ... including implementing purely mental activities, mathematical or economic principles, business practice, or algorithms on a generic computer." Thus, contends Becton, because the '887 Patent's claims recite "hardware components," the subject matter of the '887 Patent "goes far beyond `simply stat[ing] the [abstract idea] while adding the words `apply it.'" (Becton's citations omitted). The crux of Becton's argument, therefore, is that "the claims of the '887 Patent, when considered as a whole, reflect a specific application of a remote sterile compounding supervision and verification process, not impermissibly abstract fundamental concepts or longstanding practices."
Becton further argues that, even if the claims encompass an abstract idea, they also "add `significantly more' and provide an `inventive concept.'" Becton contends that Baxter's motion ignores material limitations which "reflect a significant inventive concept" beyond supervision and verification. Becton also argues that Baxter's motion "fails to consider the claim elements as an ordered combination" and urges the court that the '887 Patent's claims are eligible because they "do[ ] not preempt use of those abstract ideas generally or in the field of pharmacy." In essence, Becton argues that the patent is directed only to remote supervision and verification, not supervision and verification as a generalized concept throughout the pharmacy industry.
Despite Becton's vigorous argument that the claims' "structural elements" and "particularized implementations" show that the '887 Patent is not directed at an abstract idea, the court disagrees. After stripping away the technicalisms and superfluous verbiage from the claims' language,
Under the second step of the Alice inquiry, even if a patent attempts to claim an otherwise abstract idea, the claim can be transformed into something patentable if it incorporates an inventive concept, defined by the Supreme Court as "an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." Alice, 134 S.Ct. at 2355.
Becton urges the court that the claims' additional limitations and the unique ordered combination of these limitations constitute an inventive step that transforms the claim from abstract to patentable. Specifically, Becton characterizes the inventive limitations of Claim 1 to be "(1) supervising sterile compounding (2) performed by a nonpharmacist person (3) through use of an image capture device and (4) verification software that (5) provides for transmission and (6) storage of (7) one or more images of sterile compounding process (8) captured as that process is being performed, and also includes (9) providing an indication that the pharmacist has in fact verified the same."
The court disagrees. Becton argues that the patent recites hardware components "such as an image capture device and a computer running specially-programmed software" to perform the claimed invention. Examining the claims closely, as both containing individual elements and as an ordered combination, it is inescapable that the claims use generic, off-the-shelf technology applied in a conventional way to achieve the aim of the patent. The patent does not describe a novel sterile compounding process, a new type of image-capture device, or a particularized website or software program to perform any step. The claims and specification instead teach well-known elements used in conventional ways combined to perform the steps of supervision and verification. The court can find no inventive concept in any of the claim language that "amounts to significantly more" than a detailed description of conventional, if generic, steps of remotely supervising and verifying the work of a nonpharmacist who is preparing prescriptions. Id.
Becton does not, and cannot, argue that the computer elements, capture device, network infrastructure, or supporting software described in the claims are in themselves new inventions. Although the elements' use in the "remote pharmacy" setting is characterized by Becton as a breakthrough, the actual technological components are described only in generic terms, the technical details of which are not described. "Wholly generic computer implementation is not generally the sort
Accordingly, the court concludes that the '887 patent, as a whole, fails to demonstrate the necessary inventiveness to transform the claimed invention and overcome the fact that the patent's claims are drawn to an impermissibly abstract idea.