[00:00:11] Speaker 01:
Okay, the next argued case is number 16.

[00:00:39] Speaker 01:
1095, 1099, exigent corporation against thermo-medics.

[00:00:45] Speaker 01:
Mr. Roman.

[00:00:45] Speaker 02:
Good morning.

[00:00:51] Speaker 02:
May I please the court?

[00:00:53] Speaker 02:
In the Ellis case, the court explained why the invention in diamond v. deer was patent-eligible, even though it involved a well-known mathematical equation and ineligible concept.

[00:01:05] Speaker 02:
The claim succeeded because it used the equation

[00:01:09] Speaker 02:
in a process designed to solve a technological problem in conventional industry practice.

[00:01:15] Speaker 04:
The claims here don't incorporate any formula, do they?

[00:01:20] Speaker 04:
Do not incorporate the formula which you say leads to an unprecedented technique.

[00:01:27] Speaker 04:
The claims are very broad.

[00:01:28] Speaker 04:
They don't say anything about using the particular formula which was worked out here.

[00:01:34] Speaker 02:
Well, the processing step does incorporate

[00:01:38] Speaker 02:
laws of nature and the measuring step is the additional step that adds the inventive concept.

[00:01:48] Speaker 04:
What I'm asking you is that the claims here are extremely broad.

[00:01:53] Speaker 04:
They aren't addressing the thing that the inventor here supposedly invented.

[00:01:59] Speaker 04:
They are much broader than that.

[00:02:01] Speaker 04:
They don't say here we worked out this formula, we figured out how to do this.

[00:02:07] Speaker 04:
It just says

[00:02:08] Speaker 04:
any way of doing it is covered.

[00:02:11] Speaker 02:
That's not an obstacle to patent eligibility, the fact that you described the laws of nature that are to be applied to the inventive step.

[00:02:27] Speaker 04:
But preemption is the underlying concern.

[00:02:30] Speaker 04:
If you choose to frame your claims, to write your claims in a way

[00:02:35] Speaker 04:
that covers everything.

[00:02:36] Speaker 04:
You suffer the consequences of that.

[00:02:39] Speaker 04:
And I'm not sure why these claims don't include, for example, the traditional method of feeling someone's forehead and using that as a surrogate for body temperature.

[00:02:52] Speaker 04:
It doesn't say anything about the mechanism or the technique that was supposedly invented here.

[00:03:01] Speaker 02:
But what it does do is that it

[00:03:06] Speaker 02:
It provides a step that is not routine, not conventional, not well understood toward establishing and determining body temperature.

[00:03:17] Speaker 03:
It describes a step, but it doesn't tell us how.

[00:03:21] Speaker 03:
What's missing here is the how.

[00:03:23] Speaker 03:
So all you're left with is a method for measuring body temperature.

[00:03:29] Speaker 02:
Well, the method for measuring body temperature cannot be

[00:03:35] Speaker 02:
performed without first determining the temperature based on a radiation measurement or a temperature measurement.

[00:03:45] Speaker 02:
It doesn't talk about radiation measurement, the claims.

[00:03:49] Speaker 02:
Claim 54 does.

[00:03:50] Speaker 02:
Claim 51 deals with temperature.

[00:03:55] Speaker 03:
It talks about measured radiation, but it doesn't tell us how you're going to measure the radiation.

[00:04:01] Speaker 03:
I assume that when my mother used to put her hand on my forehead and say you're running a fever, I don't know, maybe she was measuring radiation.

[00:04:12] Speaker 03:
Maybe she was measuring, but one way or the other, that's all that your claims are left with.

[00:04:17] Speaker 03:
You describe a method, the claims are directed to a method, and there's nothing else.

[00:04:23] Speaker 03:
There's no how to this.

[00:04:27] Speaker 03:
So you're just left with the laws of nature.

[00:04:32] Speaker 02:
The law of nature is embodied only in the processing step.

[00:04:38] Speaker 02:
Taking a measurement at the forehead is not a law of nature.

[00:04:42] Speaker 02:
It may involve laws of nature, but that doesn't mean it's directed to a law of nature.

[00:04:47] Speaker 04:
But it's conventional.

[00:04:48] Speaker 04:
It's conventional.

[00:04:49] Speaker 04:
It's well known, right?

[00:04:51] Speaker 02:
It's conventional only in the sense that people could once were able to use, let's say, liquid crystal strips on the forehead and measure a forehead temperature.

[00:05:01] Speaker 02:
but it was not well-known or conventional in the context of determining body temperature.

[00:05:06] Speaker 02:
Indeed, there's undisclosed... Excuse me?

[00:05:09] Speaker 04:
That people putting a hand on someone's forehead wasn't well-known and conventional as a way of determining whether somebody has a fever?

[00:05:18] Speaker 02:
Well, that was never able to produce a medically significant temperature.

[00:05:24] Speaker 02:
Well, wait a second.

[00:05:25] Speaker 02:
There's nothing in the claim here about a medically significant temperature.

[00:05:28] Speaker 04:
Where does it say that?

[00:05:30] Speaker 02:
it says that it establishes a body temperature approximation.

[00:05:33] Speaker 02:
But it doesn't say medically significant.

[00:05:35] Speaker 02:
No, but I'm really trying to distinguish between putting the hand on the forehead.

[00:05:40] Speaker 04:
The problem is that the claim is written so broadly that it includes measuring temperature by feeling someone's forehead, doesn't it?

[00:05:48] Speaker 02:
No, because you have to apply

[00:05:51] Speaker 02:
laws of nature and an algorithm in order to get to the body temperature.

[00:05:56] Speaker 04:
What I mentioned of an algorithm here are the computations that are described in the specification.

[00:06:01] Speaker 02:
The processing step does refer to laws of nature, basically the simple laws of thermodynamics of going from cooler to hotter.

[00:06:12] Speaker 02:
And it takes into account all of those

[00:06:17] Speaker 03:
Show me in the claim where you had the limitation of an algorithm.

[00:06:27] Speaker 02:
The claim does not mention any algorithm.

[00:06:31] Speaker 02:
It merely states though that it provides based on heat flow from an internal body temperature to ambient temperature.

[00:06:38] Speaker 03:
That includes putting your hand on someone's forehead.

[00:06:47] Speaker 02:
No, you might say that the measuring step can cover putting your hand on someone's forehead, but it doesn't get you to body temperature.

[00:07:00] Speaker 02:
The key difference between this case and many of the other cases is that this added step, the one that's not the law of nature, was not known

[00:07:15] Speaker 02:
was not routine, not conventional, or well understood in the context of determining a body temperature.

[00:07:23] Speaker 02:
When you look at cases like Mayo, the added steps were well known and routine among doctors who prescribed that theopurine drug that was at the center of that case.

[00:07:34] Speaker 02:
Or in Ariosi even, the added steps were well known among those skilled in analyzing DNA.

[00:07:41] Speaker 02:
But in this case,

[00:07:43] Speaker 02:
measuring radiation or temperature at the forehead was not routine or conventional among scientists trying to determine body temperature.

[00:07:52] Speaker 02:
In fact, undisputed evidence that it had not been done also undisputed evidence that there was widespread skepticism among the most established people in the thermometry trade that it could not be done.

[00:08:05] Speaker 02:
What better evidence is there?

[00:08:07] Speaker 04:
What could not be done?

[00:08:08] Speaker 04:
Coming up with this medically significant measurement?

[00:08:13] Speaker 02:
If you look at what this standards organization that we cite, that was placed into evidence at the district court, the ASTM, it said that body temperature could not be derived from skin temperature at any region of the body.

[00:08:31] Speaker 02:
They're talking about an accurate measurement, right?

[00:08:34] Speaker 02:
As I was saying before, it's not only in the claim, but a medically significant one.

[00:08:39] Speaker 02:
a doctor or a nurse could rely on.

[00:08:41] Speaker 04:
There's your problem.

[00:08:42] Speaker 04:
It's not in the claim.

[00:08:44] Speaker 04:
It doesn't say medically significant in the claim.

[00:08:49] Speaker 02:
It does say we are going from A, a skin temperature at the forehead, and we are determining through laws of nature a body temperature.

[00:09:02] Speaker 02:
That's something that could not be done by putting your hand

[00:09:05] Speaker 02:
on someone's forehead.

[00:09:06] Speaker 03:
When you say body temperature, when I read the pan, it seemed to me that if you're going to say that something's innovative here, it's that you're measuring the core temperature of a human body, meaning almost the temperature of the heart.

[00:09:24] Speaker 02:
Right.

[00:09:25] Speaker 03:
Is that correct?

[00:09:26] Speaker 03:
Well, core temperature, not internal temperature, because I guess the forehead, that includes internal temperature.

[00:09:33] Speaker 03:
Really what you're talking about

[00:09:35] Speaker 03:
is the core temperature of the human body.

[00:09:38] Speaker 02:
Yeah, but the forehead temperature is not body temperature.

[00:09:43] Speaker 02:
It may give you a rough estimate based on the age-old practice of putting a hand there, but it does not give you, it does not tell you what the body temperature is, based on how hot it is outside, how cold it is outside, whether the patient had just been running.

[00:09:57] Speaker 03:
Okay, so it's something more than just putting the hand on the forehead.

[00:10:03] Speaker 03:
And when they ask you where is that in your claim, what are those limitations?

[00:10:11] Speaker 02:
Well, the limitations are that it's limited to skin of the forehead.

[00:10:18] Speaker 02:
And to answer Judge Dyke's concern about preemption, this claim leaves it open to others to use these laws of thermodynamics not only in any field, but even in the field of thermometry.

[00:10:31] Speaker 02:
It does not prevent them from using

[00:10:33] Speaker 02:
those laws of thermodynamics, the inventive concept here was to use those laws at the region of skin of the forehead, and not only to measure temperature, but under Claim 54, which is entitled to its own preemption analysis, the question is, was measuring radiation to determine a body temperature ever done, and is undisputed evidence that likewise,

[00:11:02] Speaker 02:
had not been done.

[00:11:03] Speaker 02:
It was not a routine, well understood or conventional step in the field of determining body temperature.

[00:11:11] Speaker 04:
Why isn't feeling someone's forehead to feel, to find out if they have a temperature, an infringement of claim, if you want?

[00:11:25] Speaker 02:
All you're doing by putting a hand on the forehead is feeling whether

[00:11:29] Speaker 02:
whether it's warm or cool or a little too warm.

[00:11:33] Speaker 04:
Are you trying to find an approximation of whether it's normal body temperature or not?

[00:11:36] Speaker 02:
No, you're not determining body temperature.

[00:11:39] Speaker 02:
You're just measuring skin temperature, which is a radically different measurement.

[00:11:43] Speaker 03:
It's not... But you're getting an approximation, albeit a lamest approximation, but you're getting an approximation one way or the other at the body temperature when you do that.

[00:11:55] Speaker 02:
Well, there's evidence in the record

[00:11:59] Speaker 02:
that the disparity between what you might measure in terms of skin temperature of the forehead is five degrees.

[00:12:05] Speaker 03:
Accuracy may be, and granted, accuracy may not be there.

[00:12:09] Speaker 03:
I mean, it may be more accurate to measure the radiation, as you say.

[00:12:15] Speaker 03:
But again, what I find missing here is that you don't explain how you're going to do that.

[00:12:21] Speaker 03:
What are the measuring steps?

[00:12:24] Speaker 03:
All you tell me is a function.

[00:12:27] Speaker 03:
All you're doing, and when you're left with that,

[00:12:29] Speaker 03:
It seems to me you're starting out with laws of nature, and you're ending up with a law of nature.

[00:12:35] Speaker 03:
You talk about an algorithm.

[00:12:38] Speaker 03:
Where is the algorithm?

[00:12:41] Speaker 02:
The thing is that we're not starting with a law of nature.

[00:12:43] Speaker 02:
We're using laws of nature in the processing step.

[00:12:46] Speaker 02:
But taking a measurement of the forehead is not a law of nature itself.

[00:12:53] Speaker 02:
It may have been a well-known process, or it was a process that people knew how to do.

[00:12:59] Speaker 02:
But to answer your question more directly, measuring someone's skin at the forehead simply does not tell you what the person's body temperature is.

[00:13:09] Speaker 02:
It might tell you what his forehead temperature is.

[00:13:11] Speaker 02:
And that's a key distinction in the medical field.

[00:13:13] Speaker 04:
When you use a surrogate for body temperature, you'll say, feel the forehead.

[00:13:16] Speaker 04:
See if the person has a temperature.

[00:13:18] Speaker 04:
They're talking about body temperature.

[00:13:19] Speaker 04:
They're not talking about forehead temperature.

[00:13:22] Speaker 02:
If that were true, Your Honor, there'd be no real market for thermometers.

[00:13:28] Speaker 02:
doctors and nurses would not be hustling to find the best and most convenient way to measure body temperature.

[00:13:35] Speaker 01:
But you see our problem.

[00:13:36] Speaker 01:
It's with the breadth of the claim.

[00:13:38] Speaker 01:
What you're asking for is somehow measuring temperature at the forehead, period.

[00:13:50] Speaker 02:
But measuring temperature... Somehow.

[00:13:52] Speaker 02:
Yes, measuring temperature at the forehead either through conduction under claim 51

[00:13:58] Speaker 02:
or via radiation under claim 54.

[00:14:02] Speaker 02:
But the fact that it was known that you could measure skin temperature at the forehead is not a knock against the eligibility.

[00:14:14] Speaker 02:
Here's a direct quote from Diamond v. Deer.

[00:14:18] Speaker 02:
It is now commonplace that an application of a law of nature to a known process may well be deserving of patent protection.

[00:14:27] Speaker 02:
In this case,

[00:14:28] Speaker 02:
What I'm saying is that it may have been a known process that you could measure the temperature of the skin of the forehead, but it was not known that you could derive body temperature by applying the laws of thermodynamics to it.

[00:14:46] Speaker 02:
The fact is that this is a watershed invention.

[00:14:49] Speaker 02:
Before this invention came along, for centuries,

[00:14:52] Speaker 02:
only invasive means of thermometry were available by sticking a thermometer into a mouth, a rectum, or the like.

[00:15:01] Speaker 02:
And this introduced to the world an era of non-invasive thermometry.

[00:15:09] Speaker 02:
And the claims may be deceptive in their simplicity, but the fact is that it was not well-known, routine or conventional, in the field of thermometry

[00:15:22] Speaker 02:
to determine a body temperature from the forehead temperature.

[00:15:27] Speaker 02:
It is a remarkable advance.

[00:15:28] Speaker 02:
It's a remarkable inventive concept that he determined that from measuring radiation or temperature at the forehead, that you could get to a body temperature.

[00:15:40] Speaker 02:
It revolutionized the field of thermometry.

[00:15:44] Speaker 01:
Okay.

[00:15:44] Speaker 01:
Thank you, Mr. Leamy.

[00:15:46] Speaker 01:
We'll save you rebuttal time and let's hear from the other side.

[00:15:55] Speaker 01:
Mr. Devlin.

[00:15:56] Speaker 00:
Thank you, Your Honors.

[00:15:57] Speaker 00:
Tim Devlin on behalf of ThermoMedics.

[00:16:01] Speaker 00:
Council did something interesting a minute ago that the claims are deceptive in their simplicity.

[00:16:05] Speaker 00:
They're not deceptive in their simplicity.

[00:16:07] Speaker 00:
They're revealing in their simplicity.

[00:16:09] Speaker 00:
They strip away every feature that's described in the 938 patent specification that could impart patentability.

[00:16:17] Speaker 00:
There are plenty of other claims in this patent, dozens and dozens of claims.

[00:16:21] Speaker 00:
There are other patents in this patent family that have dozens and dozens of additional claims, all of which recite certain additional features, whether they're method steps, whether they're physical components or structures.

[00:16:32] Speaker 00:
They recite additional features that could arguably impart patentability.

[00:16:36] Speaker 00:
I don't know.

[00:16:36] Speaker 00:
They're not an issue here.

[00:16:37] Speaker 00:
But these claims strip away all of that.

[00:16:41] Speaker 00:
And they each recite only two broad steps without any particular way or reason or structure to do that.

[00:16:49] Speaker 00:
Each of those steps in each of the independent claims recites a natural law.

[00:16:55] Speaker 00:
Radiation, measuring surface temperature for radiation, have been known for decades in all sorts of fields.

[00:17:02] Speaker 00:
The 938 patent admits it.

[00:17:04] Speaker 00:
The quote's on page 11 of Appellee's brief.

[00:17:07] Speaker 00:
I can recite it if your honors want.

[00:17:10] Speaker 00:
The next steps of turning that surface temperature measurement into a body temperature approximation

[00:17:18] Speaker 00:
are also known natural laws, and the 938 patent specification says that.

[00:17:24] Speaker 00:
It says it's well known to do this.

[00:17:26] Speaker 00:
It's well known to use these calculations to do these various things.

[00:17:30] Speaker 00:
The two claims differ.

[00:17:31] Speaker 00:
That is, 51 and 54, the two independent claims.

[00:17:34] Speaker 00:
They differ in the sense that 51 is independent.

[00:17:36] Speaker 04:
I'm not sure that if they put the calculations in the claim that that wouldn't have been patentable.

[00:17:42] Speaker 04:
The problem is that the algorithm and the calculation

[00:17:45] Speaker 04:
calculational methodology, which they say they arrived at, is not part of the model.

[00:17:50] Speaker 00:
That's right, Your Honor.

[00:17:51] Speaker 00:
I mean, there were any one of a number of features that, when recited, might impart patentability.

[00:17:58] Speaker 00:
And you can entertain a whole sort of set of hypotheticals about whether it would do it or not to write in the equations here, to limit the specific variables you're using, as opposed to other potential variables or other potential constants that you would use in applying those variables.

[00:18:14] Speaker 00:
There's no doubt that some work went into figuring out how one could obtain a surface temperature by measuring infrared radiation.

[00:18:23] Speaker 00:
But that work was done decades and decades ago by others.

[00:18:28] Speaker 00:
And there's no doubt there was a lot of work involved in figuring out how the surface temperature of a part of your body, be it the tympanic membrane, which is well known, or forehead, which was well known as we talked about in that brief,

[00:18:41] Speaker 00:
how you can convert that into an approximation of a body temperature, such as you would normally get from an oral thermometer or rectal or armpit.

[00:18:50] Speaker 00:
But all of that work was already done.

[00:18:52] Speaker 00:
All of this stuff is simply well-known laws of nature.

[00:18:58] Speaker 00:
You can't save a claim, as Mr. Lehman said, by saying, well, the latter step uses the law of nature.

[00:19:05] Speaker 00:
I don't even know what else to say here.

[00:19:06] Speaker 00:
There are multiple Supreme Court cases that we can trace.

[00:19:10] Speaker 00:
If we look at Diamond v. Deer, it has nothing to do with the fact that it happens to recite, I shouldn't say nothing to do with.

[00:19:15] Speaker 00:
If you look at Mayo, Mayo articulates why Diamond v. Deer is paddable because it recites many, many other features.

[00:19:23] Speaker 00:
You're continuously monitoring the temperature of something.

[00:19:26] Speaker 00:
You're actually using physical components.

[00:19:28] Speaker 00:
It involves a transformation of matter in the claim.

[00:19:31] Speaker 00:
All of that's recited.

[00:19:33] Speaker 00:
That's the type of recitation that saves

[00:19:35] Speaker 00:
There are other cases that show the same thing.

[00:19:39] Speaker 00:
Myriad, I think, is probably the case that's most on point here, because the facts of it, in the overall scope of the case, mirror what's happening here.

[00:19:49] Speaker 00:
The Myriad court said, hey, there are a lot of claims here that might satisfy the 101 patentability standards.

[00:19:56] Speaker 00:
There are a lot that are.

[00:19:58] Speaker 00:
They just didn't happen to be the ones that were asserted.

[00:20:00] Speaker 00:
The only ones that were asserted in that case were much broader and stripped away.

[00:20:04] Speaker 00:
all of the elements that imparted patentability.

[00:20:07] Speaker 00:
The same thing is true here.

[00:20:09] Speaker 00:
Thermometers that are accused of infringement, while infringement is not an issue, it's useful to note that the thermometers that are accused of infringement don't include any of those new innovations that the 938 patent specification describes as giving you a better forehead temperature reading, scanning across the forehead to find the right artery, the temporal artery.

[00:20:31] Speaker 00:
taking multiple readings per second, so that as you scan, you can make sure you find it.

[00:20:36] Speaker 00:
Finding the peak reading, which indicates you're there at the temporal artery.

[00:20:39] Speaker 00:
The physical components that help and assist that scanning.

[00:20:42] Speaker 00:
None of those things are recited here.

[00:20:45] Speaker 00:
These claims strip away all of that.

[00:20:48] Speaker 00:
And the reason that it's only these claims that are asserted here is because none of those other features are in the accused product.

[00:20:54] Speaker 00:
So exigent had to rely on these broadest claims.

[00:20:58] Speaker 00:
I haven't examined the timelines, Your Honor, but I would bet that the types of thermometers that are accused of infringement here were out and in existence before the 938 patent claims at issue here were introduced.

[00:21:13] Speaker 00:
Then there was a continuation case, so the specification existed quite some time, this patent before the accused products here existed.

[00:21:22] Speaker 00:
But the claims may not have.

[00:21:24] Speaker 00:
Doesn't matter, though.

[00:21:26] Speaker 00:
These claims were the only ones that could be asserted.

[00:21:29] Speaker 00:
They're incredibly broad.

[00:21:31] Speaker 00:
They strip away all the features that could impart patentability, whether those features are conventional or whether they're not, whether they're new or whether they're old.

[00:21:40] Speaker 00:
There are no recited features in these two claims apart from the natural laws that involve taking radiation and converting that into a surface temperature measurement and then taking a surface temperature measurement and converting that into an approximation of a body temperature.

[00:21:58] Speaker 00:
That's it.

[00:21:58] Speaker 00:
That's all the claims recite.

[00:22:00] Speaker 00:
That's claim 54, which is restricted to radiation.

[00:22:03] Speaker 00:
Claim 51, on note, is even broader than that.

[00:22:06] Speaker 00:
It says, in the first step, you just take a surface temperature.

[00:22:10] Speaker 00:
That surface temperature could be done in the same way, by looking at radiation and converting that to the surface temperature, or it could be done by the old hand to the forehead, just touching it and having heat actually flow directly from contact surface to contact surface.

[00:22:28] Speaker 00:
Your Honor, the court has no further questions.

[00:22:32] Speaker 01:
Thank you.

[00:22:33] Speaker 00:
Thank you.

[00:22:33] Speaker 01:
Thank you, Mr. Devlin.

[00:22:43] Speaker 01:
Mr. Levin.

[00:22:45] Speaker 02:
I just want to respond to Mr. Devlin's comments about the fact that there was anything about this claim that was well known before this invention came about.

[00:22:54] Speaker 02:
The fact is that

[00:22:56] Speaker 02:
What he's relying on, as explained in his brief, was earlier patents of exigent that are not an issue in this case.

[00:23:05] Speaker 02:
And he is using 102 arguments to suggest that there's nothing new about the 938 patent claims at issue here.

[00:23:15] Speaker 02:
But in fact, 102 is an impermissible inquiry when discussing 101.

[00:23:21] Speaker 02:
And the Supreme Court is repeatedly warned against shifting the eligibility inquiry

[00:23:26] Speaker 02:
to Section 102.

[00:23:27] Speaker 02:
And the Deer case specifically said that novelty under Section 102 stands wholly apart from whether the invention qualifies as statutory subject matter.

[00:23:39] Speaker 02:
That's a downstream consideration once you've determined whether a claim is eligible or not.

[00:23:46] Speaker 02:
And there are many factual issues that his anticipation argument raises.

[00:23:52] Speaker 04:
Those earlier exigent patents... He's not raising anticipation issues.

[00:23:56] Speaker 04:
It's a patentable subject matter issue.

[00:23:59] Speaker 04:
It's a patentable subject matter issue.

[00:24:01] Speaker 04:
It's not an anticipation issue.

[00:24:04] Speaker 02:
Well, the fact is that fully half of his brief is devoted to 102 issues.

[00:24:10] Speaker 02:
And he talks about the earlier patents and how they prefigure the invention of this claim.

[00:24:18] Speaker 02:
The fact is that the earlier claims never used the word temple artery.

[00:24:23] Speaker 02:
They never used the word forehead.

[00:24:25] Speaker 02:
It was simply not known to a person skilled in the art, based on those earlier exogen patents, that body temperature approximation could be derived from a simple measurement of radiation or temperature of the forehead.

[00:24:40] Speaker 02:
That is the inventive concept that our inventor introduced with this patent.

[00:24:50] Speaker 01:
Okay.

[00:24:52] Speaker 01:
Thank you.

[00:24:52] Speaker 01:
Thank you, Mr. Lehman.

[00:24:54] Speaker 01:
Thank you, Mr. Devlin.

[00:24:55] Speaker 01:
The case is taken into submission.