Exergen Corporation v. Kaz USA, Inc. ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EXERGEN CORPORATION,
Plaintiff-Cross-Appellant
v.
KAZ USA, INC.,
Defendant-Appellant
______________________
2016-2315, 2016-2341
______________________
Appeals from the United States District Court for the
District of Massachusetts in No. 1:13-cv-10628-RGS,
Judge Richard G. Stearns.
______________________
Decided: March 8, 2018
______________________
KERRY L. TIMBERS, Sunstein Kann Murphy & Timbers
LLP, Boston, MA, argued for plaintiff-cross-appellant.
Also represented by ROBERT M. ASHER, JOEL R. LEEMAN,
BRANDON TAYLOR SCRUGGS, SHARONA STERNBERG.
PRATIK A. SHAH, Akin, Gump, Strauss, Hauer & Feld,
LLP, Washington, DC, argued for defendant-appellant.
Also represented by ZE-WEN JULIUS CHEN, JAMES EDWARD
TYSSE; DANIEL LYNN MOFFETT, KIRT S. O'NEILL, San
Antonio, TX.
______________________
2 EXERGEN CORP. v. KAZ USA, INC.
Before MOORE, BRYSON, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Dissenting opinion filed by Circuit Judge HUGHES.
MOORE, Circuit Judge.
Kaz USA, Inc. (“Kaz”) appeals the United States Dis-
trict Court for the District of Massachusetts decision
holding claims 7, 14, and 17 of U.S. Patent No. 6,292,685(“’685 patent”) and claims 17, 24, 33, 39, 40, 46, 49, 60,
and 66 of U.S. Patent No. 7,787,938 (“’938 patent”) di-
rected to patent eligible subject matter. Kaz also appeals
the district court’s denial of judgment as matter of law on
noninfringement of the ’685 patent and denial of a new
trial on damages. Exergen Corp. (“Exergen”) cross-
appeals the district court’s summary judgment of no
willful infringement. For the reasons discussed below, we
affirm-in-part, reverse-in-part, vacate-in-part, and re-
mand for further proceedings.
BACKGROUND
The ’685 and ’938 patents disclose a body temperature
detector that calculates a person’s core temperature by
detecting the temperature of the forehead directly above
the superficial temporal artery. ’685 patent 1 at 2:10–14.
A person’s core temperature can be computed by applying
a constant coefficient to the skin and ambient tempera-
ture readings. Id. at 3:8–16. The patents explain that the
superficial temporal artery is ideal for taking temperature
due to its accessibility, stable blood flow, and temperature
close to that of the heart. Id. at 3:63–4:8. They teach to
1 The specifications of the ’685 and ’938 patents are
effectively identical. Unless otherwise specified, citations
to the ’685 patent refer to both patents.
EXERGEN CORP. v. KAZ USA, INC. 3
“locate the temporal artery, a temperature sensor, prefer-
ably a radiation detector 20, is scanned across the side of
the forehead over the temporal artery while electronics in
the detector search for the peak reading which indicates
the temporal artery.” Id. at 4:9–13. The patents further
explain that prior art temperature detectors did not
“provide the unique combination of elements which enable
consistent measurements of core temperature by scanning
across a superficial artery.” Id. at 8:54–60. For example,
prior art detectors were not adapted to scan across a
target surface by taking multiple samples per second or
were based on a pivoting scan rather than a lateral scan.
Id. at 8:60–9:8.
The claims at issue include both apparatus claims and
method claims. Claim 49 which depends from claim 48 of
the ’685 patent, an apparatus claim, recites:
48. A body temperature detector comprising:
a radiation detector; and
electronics that measure radiation from at
least three readings per second of the ra-
diation detector as a target skin surface
over an artery is viewed, the artery having
a relatively constant blood flow, and that
process the measured radiation to provide
a body temperature approximation, dis-
tinct from skin surface temperature, based
on detected radiation.
49. The body temperature detector of claim
48 wherein the artery is a temporal artery.
4 EXERGEN CORP. v. KAZ USA, INC.
Claim 24, which depends from claim 14, of the ’938 pa-
tent, a method claim, recites 2:
14. A method of detecting human body tempera-
ture comprising making at least three radiation
readings per second while moving a radiation de-
tector to scan across a region of skin over an ar-
tery to electronically determine a body
temperature approximation, distinct from skin
surface temperature.
24. The method of claim 14 wherein the artery is
a temporal artery.
Exergen sued Kaz and two other competitors, Brook-
lands Inc. and Thermomedics Inc., in the District of
Massachusetts, and the three suits proceeded separately
with different judges. The parties and judges involved
agreed to consolidate claim construction for the three
cases, but all other matters were resolved separately. In
the Brooklands suit, the district court held claims 51 and
54 of the ’938 patent ineligible under 35 U.S.C. § 101.
Exergen Corp. v. Brooklands Inc., 125 F. Supp. 3d 307,
312–17 (D. Mass. 2015). In the Thermomedics suit, the
district court held claims 51, 52, 54, and 55 of the ’938
patent ineligible under § 101. Exergen Corp. v. Thermo-
medics, Inc., 132 F. Supp. 3d 200, 203–08 (D. Mass. 2015),
aff’d sub nom. Exergen Corp. v. Sanomedics Int’l Hold-
ings, Inc., 653 F. App’x 760 (Fed. Cir. 2016).
2 Appellant argues that method claim 14 is repre-
sentative of the claims at issue on appeal. Appellant’s
Corrected Principal Br. 6. Appellee argues the twelve
claims at issue separately grouping them by their com-
mon limitations. See, e.g., Cross Appellant’s Principal &
Resp. Br. 12–13, 37–47.
EXERGEN CORP. v. KAZ USA, INC. 5
Kaz moved for summary judgment, asserting that the
Thermomedics judgment had preclusive effect. The
district court denied Kaz’s motion with respect to the
claims currently on appeal. The district court also grant-
ed Kaz’s pre-trial motion for summary judgment of no
willful infringement.
After trial, the jury found all asserted claims in-
fringed and not invalid and awarded Exergen $9,802,228
in lost profits and $4,840,320 in reasonable royalties. No
factual or legal issues regarding patent eligibility under
§ 101 were submitted to the jury.
After post-trial briefing, the district court, with the
benefit of the evidence presented at trial and “[g]uided by
the jury’s verdict, and by the pleadings specific to this
case,” denied judgment of invalidity under § 101.
J.A. 105. It also summarily denied Kaz’s motions for
judgment as a matter of law with respect to noninfringe-
ment and for a new trial on damages. Kaz appeals the
district court’s denial of its motions with respect to § 101,
noninfringement, and damages. Exergen cross-appeals
the district court’s grant of summary judgment of no
willful infringement. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
In patent appeals, we apply the law of the regional
circuit, here the First Circuit, to issues not unique to
patent law. AbbVie Deutschland GmbH & Co., KG v.
Janssen Biotech, Inc., 759 F.3d 1285, 1295 (Fed. Cir.
2014). The First Circuit reviews the grant or denial of
motions for summary judgment de novo. Id. It reviews
the denial of judgment as a matter of law de novo, only
reversing if the facts and inferences point so strongly and
overwhelmingly in favor of the movant that a reasonable
jury could not have reached a verdict against that party.
Id. at 1297. The First Circuit also reviews the denial of a
motion for a new trial for abuse of discretion. Id. at 1302.
6 EXERGEN CORP. v. KAZ USA, INC.
I. Patent Eligibility
Patent eligibility under 35 U.S.C. § 101 is an issue of
law we review de novo. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir.
2017). Anyone who “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. 35 U.S.C. § 101. Because patent protec-
tion does not extend to claims that monopolize the “build-
ing blocks of human ingenuity,” claims directed to laws of
nature, natural phenomena, and abstract ideas are not
patent eligible. Alice Corp. Pty. v. CLS Bank Int’l, 134 S.
Ct. 2347, 2354 (2014). The Supreme Court instructs
courts to distinguish between claims that claim patent
ineligible subject matter and those that “integrate the
building blocks into something more.” Id. First, we
“determine whether the claims at issue are directed to a
patent-ineligible concept.” Id. at 2355. If so, we “examine
the elements of the claim to determine whether it con-
tains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.”
Id. at 2357 (quoting Mayo Collaborative Servs. v. Prome-
theus Labs., Inc., 566 U.S. 66, 72, 79 (2012)). If the ele-
ments involve “well-understood, routine, [and]
conventional activity previously engaged in by research-
ers in the field,” Mayo, 566 U.S. at 73, they do not consti-
tute an “inventive concept.” As argued by the parties, the
step two dispute in this case turns entirely on whether
the combination of elements was well-understood, routine,
and conventional at the time of the invention. In these
circumstances, the second step of the Mayo/Alice test is
satisfied when the claim limitations “involve more than
performance of ‘well-understood, routine, [and] conven-
tional activities previously known to the industry.’”
Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014)
(quoting Alice, 134 S. Ct. at 2359); see also Intellectual
EXERGEN CORP. v. KAZ USA, INC. 7
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328
(Fed. Cir. 2017) (holding that the features constituting
the inventive concept in step two of Mayo/Alice “must be
more than ‘well-understood, routine, conventional activi-
ty’” (quoting Mayo, 132 S. Ct. at 1298)); Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016) (same); Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)
(“[I]t is of course now standard for a § 101 inquiry to
consider whether various claim elements simply recite
‘well-understood, routine, conventional activit[ies].’”
(second alteration in original) (quoting Alice, 134 S. Ct. at
2359)).
After trial, the district court denied Kaz’s motion for
judgment of invalidity under § 101. There is no dispute in
this case that the asserted claims employ a natural law to
achieve their purpose. The claims recite a “method of
detecting human body temperature” and “a body tempera-
ture detector” which generally utilize temperature read-
ings from the forehead skin and the ambient temperature
to calculate an approximate core body temperature. See,
e.g., ’685 patent at claim 17; ’938 patent at claim 60. And
a significant portion of the specification is dedicated to
deriving the mathematical equations to calculate core
temperature based on ambient and skin temperature
readings. ’685 patent at 6:58–8:45. What the parties
dispute, however, is whether the additional claimed steps
beyond calculating the temperature present a novel
technique in this computation or add an inventive concept
sufficient to transform the claims into a patent-eligible
application.
The district court reasoned that “while the asserted
claims are based in natural phenomena,” the claims recite
additional steps which, like the claims in Diamond v.
Diehr, 450 U.S. 175 (1981), “transformed the underlying
natural laws into inventive methods and useful devices
that noninvasively and accurately detect human body
8 EXERGEN CORP. v. KAZ USA, INC.
temperature.” J.A. 110, 113–14. The court noted that the
asserted claims each recite a subset of three steps: (1)
moving while laterally scanning (’685 patent claims 7, 14,
and 17; ’938 patent claims 17, 24, 33, 60, and 66); (2)
obtaining a peak temperature reading (’685 patent claim
7; ’938 patent claims 60 and 66); and (3) obtaining at least
three readings per second (’938 patent claims 17, 24, 39,
40, 46, and 49). Kaz argued both below and on appeal
that these additional elements were known in the prior
art. The district court held simply being known in the art
did not suffice to establish that the subject matter was not
eligible for patenting. The district court recognized that a
“new combination of steps in a process may be patentable
even though all the constituents of the combination were
well known and in common use before the combination
was made.” J.A. 112 (quoting Diehr, 450 U.S. at 188). The
district court found that though these claim elements may
have been known in the art, they were “previously uti-
lized to detect hot spots indicating injury or tumors, or
surface temperature differentials,” not used to solve the
problem of detecting arterial temperature beneath the
skin. J.A. 112–13. For example, the jury heard testimony
that a known technique for scanning tissue and using
differential ambient and scanned temperatures was used
to detect injury in horses, not take human body tempera-
ture. Likewise, the prior art DermaTemp product used a
sensor that could take readings ten times a second and
“lock on the highest temperature,” but this product was
used to scan differential surface temperatures for diag-
nostic purposes “to find an injury or a hot spot.” 3
3 The dissent suggests Exergen’s claimed invention
amounts to simply using DermaTemp, a preexisting
temperature detector to take a measurement of forehead
skin temperature. Dissent at 5. The patentee presented
evidence that the DermaTemp product was not, however,
EXERGEN CORP. v. KAZ USA, INC. 9
J.A. 5319, 15565. And these methods made no use of the
newly calculated coefficient for translating measurements
taken at the forehead into core body temperature read-
ings. After considering all the trial testimony and evi-
dence, the district court found that “there is no evidence
in the record” that these methods were well-understood,
routine, and conventional prior to the introduction of
Exergen’ s invention. J.A. 113.
The district court’s conclusion that these claim ele-
ments were not well-understood, routine, and convention-
al is a question of fact to which we must give clear error
deference. Like indefiniteness, enablement, or obvious-
ness, whether a claim is directed to patentable subject
matter is a question of law based on underlying facts.
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1343 (Fed. Cir. 2016) (“Indefiniteness is a question
of law that we review de novo, subject to a determination
of underlying facts.” (citation omitted)); Alcon Research
Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir.
2014) (“Whether a claim satisfies the enablement re-
quirement of 35 U.S.C. § 112 is a question of law that we
review without deference, although the determination
may be based on underlying factual findings, which we
review for clear error.”); Apple Inc. v. Samsung Elecs. Co.,
839 F.3d 1034, 1047 (Fed. Cir. 2016) (en banc) (“Obvious-
ness is a question of law based on underlying facts.”). We
have previously stated that while the § 101 inquiry is
capable of measuring core body temperature by scanning
across the forehead due to its design. J.A. 15561–62,
15568, 15586, 15683. We cannot say, based on the evi-
dence of record, that the district court clearly erred when
it concluded that the DermaTemp product did not result
in the claimed combination being well-understood, rou-
tine, and conventional.
10 EXERGEN CORP. v. KAZ USA, INC.
ultimately a legal question, sometimes the inquiry may
contain underlying factual issues. Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016); Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1342 (Fed. Cir. 2013). And
the Supreme Court recognized that in making the § 101
determination, the inquiry “might sometimes overlap”
with other fact-intensive inquiries like novelty under
§ 102. Mayo, 566 U.S. at 90.
As our cases demonstrate, not every § 101 determina-
tion contains disputes over the underlying facts. See, e.g.,
Content Extraction, 776 F.3d at 1349 (patent owner
conceded the argued inventive concept “was a routine
function of scanning technology at the time the claims
were filed”); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (patent
owner argued an “interactive interface” is “a specific
application of the abstract idea that provides an inventive
concept” and did not dispute that the computer interface
was generic). As we indicated in Berkheimer v. HP Inc.,
No. 2017-1437, at 13 (Fed. Cir. Feb. 8, 2018), “[n]othing in
this decision should be viewed as casting doubt on the
propriety of those cases.”
The question of whether a claim element is well-
understood, routine, and conventional to a skilled artisan
in the relevant field is a question of fact and deference
must be given to the determination made by the fact
finder on this issue. Something is not well-understood,
routine, and conventional merely because it is disclosed in
a prior art reference. There are many obscure references
that nonetheless qualify as prior art. For example, we
have held that a single copy of a thesis written in German
and located in a German university library was a printed
publication because that thesis was available to the
public. In re Hall, 781 F.2d 897, 897–900 (Fed. Cir. 1986).
This type of evidence, for example, would not suffice to
establish that something is “well-understood, routine, and
EXERGEN CORP. v. KAZ USA, INC. 11
conventional activity previously engaged in by scientists
who work in the field.” Mayo, 566 U.S. at 79. 4
This case is not like either Mayo or Ariosa, where
well-known, existing methods were utilized to determine
the existence of a natural phenomenon. In Mayo, the
claimed method was directed to measuring metabolite
levels in the blood (and determining the relationship to
toxicity and effectiveness), a “natural law.” 566 U.S. at
77. The methods of measurement “were well known in
the art” and were “well-understood, routine, conventional
activity.” Id. at 80. Similarly, in Ariosa the claimed
method was directed to measuring fetal DNA in the
mother’s blood, a “naturally occurring phenomenon.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1376 (Fed. Cir. 2015), cert denied, 136 S. Ct. 2511 (2016).
The measurement method there, too, was “conventional,
routine and well understood.” Id. at 1378.
This case is different. Here, the patent is directed to
the measurement of a natural phenomenon (core body
temperature). Even if the concept of such measurement is
directed to a natural phenomenon and is abstract at step
one, the measurement method here was not conventional,
routine, and well-understood. Following years and mil-
lions of dollars of testing and development, the inventor
determined for the first time the coefficient representing
4 In this case, the district court held that whether
the technique of scanning while moving a radiation detec-
tor was well-understood, routine, and conventional was a
“close” question. J.A. 94. It noted that Kaz had shown
that 30-year-old patents disclosed such scanning. Howev-
er, the court found that Kaz had the burden of proof and
that based on the evidence before it, “it is unclear whether
this technique has become so prevalent as to be routine or
conventional.” J.A. 94.
12 EXERGEN CORP. v. KAZ USA, INC.
the relationship between temporal-arterial temperature
and core body temperature and incorporated that discov-
ery into an unconventional method of temperature meas-
urement. As a result, the method is patent eligible,
similar to the method of curing rubber held eligible in
Diehr. 5 In other words, at the second step of Mayo/Alice,
the patent incorporated an inventive concept. The same
is true here. The inventor “transformed the process into
an inventive application of the formula.” Id. at 81.
In Alice, the claims recited only the method for ex-
changing financial obligations and a generic computer
system. 134 S. Ct. at 2353. There was no dispute in that
case that the use of a generic computer in implementing
the method was well-understood and conventional; the
only argument advanced by the patent-holder at step two
was that “the claims are patent eligible because these
steps require a substantial and meaningful role for the
computer.” Id. at 2359 (internal quotation omitted). In
Mayo, the Supreme Court noted that the patents them-
selves stated that the claimed methods for determining
metabolite levels were well-known in the art, an issue
which was not disputed by the parties. 566 U.S. at 79.
The Supreme Court did not hold that district court fact
finding was not entitled to deference.
In Ariosa, like Mayo, there was no dispute that the
claimed methods were well-known, routine and conven-
tional. We cited the patent specification and prosecution
history which repeatedly conceded this point. 788 F.3d at
1377 (“The ’540 patent provides that ‘[t]he preparation of
5 In Mayo, the Supreme Court cited Diehr for the
proposition that “a process is not unpatentable simply
because it contains a law of nature or a mathematical
algorithm.” 566 U.S. at 71 (quoting Diehr, 450 U.S. at
187).
EXERGEN CORP. v. KAZ USA, INC. 13
serum or plasma from the material blood sample is car-
ried out by standard techniques.’” (quoting specification));
id. (“[The specification] provides that ‘[s]tandard nucleic
acid amplification systems can be used . . . .’” (quoting
specification)); id. at 1378 (“[O]ne skilled in the art is
aware of a variety of techniques which might be used to
detect different nucleic acid species. . . . These techniques
are a matter of routine for one skilled in the art for the
analysis of DNA.” (quoting prosecution history)); id.
(“[O]ne skilled in the art is readily able to apply the
teachings of the present invention to any one of the well-
known techniques for detection of DNA . . . .” (quoting
prosecution history)). And the parties did not dispute this
issue. In such a case, with no contrary evidence, no
genuine issue of fact existed to prevent summary judg-
ment.
In Bascom, we reversed the 12(b)(6) dismissal holding
“[o]n this limited record, this specific method of filtering
Internet content cannot be said, as a matter of law, to
have been conventional or generic.” Bascom Glob. Inter-
net Servs., 827 F.3d at 1350. Rather than suggest that
this inquiry is a legal one, this suggests it is very much a
factual one. In Bascom, we did not reverse without defer-
ence the district court’s determination regarding well-
understood, conventional and routine, we held that there
were sufficient allegations to support an inventive concept
and that “[w]e find nothing on this record that refutes
those allegations as matter of law or justifies dismissal
under 12(b)(6).” Id. at 1352.
The dissent does not dispute that whether claim ele-
ments are well-understood, routine, and conventional in a
particular art at a particular time is a fact finding. Nor
does it dispute that such fact findings by the district court
after a full trial on the merits are entitled to deference
and should be reviewed for clear error. Instead, the
dissent argues that the district court’s fact finding in this
case regarding whether the claimed temperature meas-
14 EXERGEN CORP. v. KAZ USA, INC.
urement method is well-understood, routine, and conven-
tional is clearly erroneous. For the reasons discussed, we
do not agree.
After a trial, the district court in this case concluded
that the claimed combination at issue was not proven to
be well-understood, routine, and conventional. It cited
the evidence presented at trial and from the patent speci-
fications. This is a fact finding reviewed for clear error.
We conclude that the district court fact finding that the
claimed combination was not proven to be well-
understood, routine, and conventional is not clearly
erroneous.
Kaz also argues that it was inappropriate for the dis-
trict court to make these fact findings because it had a
Seventh Amendment right to have a jury resolve any
underlying factual disputes. The Seventh Amendment
preserves the right to a jury trial for “[s]uits at common
law.” U.S. Const. Amend. VII. The Supreme Court has
construed this language to require a jury trial for those
actions in which only legal rights and remedies are at
issue, as opposed to equitable rights and remedies. Tull
v. United States, 481 U.S. 412, 417 (1987). Whether a
modern statutory cause of action satisfies this language
requires a two-step inquiry, first comparing the “action to
18th-century actions brought in the courts of England
prior to the merger of the courts of law and equity,” and
second, examining the remedy sought to determine
whether it is legal or equitable in nature. Id. at 417–18.
Kaz analogizes patent eligibility to obviousness, arguing
that both are legal questions with underlying factual
components to which a right to trial by jury exists. Kaz
acknowledges that there are legal questions in patent
cases which can contain underlying factual components
such as claim construction to which there is no right to
trial by jury.
EXERGEN CORP. v. KAZ USA, INC. 15
Whether the Seventh Amendment guarantees a jury
trial on any factual underpinnings of § 101 is a question
which awaits more in-depth development and briefing
than the limited discussion in this case. We need not
decide that question in this case because Kaz waived its
right to a jury trial for the factual issues underlying the
§ 101 determination in this case.
Three actions by Kaz demonstrate waiver of any
potential right to a jury trial for fact issues underlying
§ 101. First, in the joint pretrial memorandum, Kaz
agreed that § 101 is “a question of law to be decided by
the Court” and “[t]o the extent the Court elects to have the
jury decide underlying factual issues relevant to § 101,
the parties submit proposed special interrogatories in
their respective proposed special verdict questions.”
J.A. 13979–80 (emphasis added). The use of the word
“elects” indicates that the parties agreed that the district
court may, in its discretion, opt to send fact issues to the
jury or not. Second, during trial, when the district court
informed the parties that it would not give the jury any
special verdict questions on § 101 because the jury may
confuse the obviousness inquiry with the well-understood,
conventional, routine inquiry, Kaz did not object. See
Marcano-Rivera v. Pueblo Int’l, Inc., 232 F.3d 245, 253 n.4
(1st Cir. 2000) (“In this Circuit, ‘[s]ilence after instruc-
tions, including instructions on the form of the verdict to
be returned by the jury, typically constitutes a waiver of
any objections.’” (alteration in original) (quoting Putnam
Res. v. Pateman, 958 F.2d 448, 456 (1st Cir. 1992))); see
also Fed. R. Civ. P. 49(a)(3). Finally, in the introduction
of its post-trial motion for judgment of invalidity, Kaz
stated, Ҥ 101 is an issue for the Court to resolve now, in
the first instance, as both the finder of fact and the arbiter
of law.” J.A. 16672 (emphasis added). These three af-
firmative actions, occurring before, during, and after trial,
demonstrate that Kaz acquiesced in the district court’s
resolution of any underlying fact questions.
16 EXERGEN CORP. v. KAZ USA, INC.
II. Infringement of the ’685 Patent
Claims 7, 14, and 17 of the ’685 patent recite “compu-
ting an internal body temperature” as a “function of
ambient temperature and” either “the peak temperature
reading” (claim 7) or “sensed surface temperature” (claims
14 and 17). All three claims require detecting tempera-
ture by laterally scanning a detector across the forehead.
The parties’ joint claim construction statement stipulated
that “internal body temperature” means “temperature of a
region of the body existing beneath the sensed surface.”
The parties agree that the “sensed surface” in the claims
is the forehead. Therefore, the limitations requiring
“computing an internal body temperature,” according to
the parties’ agreed construction, requires computing the
temperature of a region of the body existing beneath the
forehead.
The district court correctly instructed the jury on the
claim construction, and the jury found claims 7, 14, and
17 of the ’685 patent infringed. The district court denied
Kaz’s post-trial motion for judgment of noninfringement
as a matter of law, reasoning that evidence supported a
finding that the “temperature of a region of the body
existing beneath the sensed surface” limitation was met
because the oral-equivalent temperature “reported by the
accused devices was not the measured oral temperature,
and was higher than the skin temperature, but lower
than the temperature of the temporal artery.” J.A. 57.
We review the jury’s infringement findings for substantial
evidence. Hewlett-Packard Co. v. Mustek Sys., Inc., 340
F.3d 1314, 1318 (Fed. Cir. 2003).
Kaz argues the jury’s verdict of direct infringement of
’685 claims 7, 14, and 17 is not supported by substantial
evidence because the accused devices calculate an oral-
equivalent temperature, not the temperature of the body
beneath the forehead. We agree and reverse the verdict of
EXERGEN CORP. v. KAZ USA, INC. 17
infringement with respect to claims 7, 14, and 17 of the
’685 patent.
It is undisputed how the accused devices work: they
measure the temperature at the forehead and the ambi-
ent temperature, and then they use look-up tables stored
in memory to determine the oral-equivalent temperature
that is provided to the user. The claims as construed,
however, require computing the temperature of a region
of the body existing beneath the forehead, not the oral-
equivalent temperature.
The record evidence demonstrates that because warm
blood circulates throughout the body’s arteries, and
because other body temperatures range from the surface
temperature of the skin to the arterial temperature, both
the oral-equivalent temperature and the temperature of
the body beneath the forehead may operate within the
same range of temperatures. But demonstrating that two
different temperatures operate within the same range is
not the same as demonstrating that the accused devices
actually compute the temperature of a particular region of
the body. Though the oral-equivalent temperature may
be insubstantially different from the temperature of the
area of the body beneath the forehead, infringement
under the doctrine of equivalents is not an issue in this
case.
Exergen argues its expert testified that the accused
devices add temperature back in to the measured fore-
head surface temperature to compensate for the heat loss,
so the accused devices therefore calculate the temperature
of the region of tissue beneath the forehead skin. At best,
Exergen’s cited testimony demonstrates that the oral-
equivalent temperature calculated by the accused devices
approximates the temperature of the body beneath the
forehead. While this evidence supports the jury’s in-
fringement verdict for the asserted claims of the ’938
patent, each of which requires a determination of a “body
18 EXERGEN CORP. v. KAZ USA, INC.
temperature approximation,” it does not evidence that the
devices compute the temperature of the region of the body
existing beneath the forehead. Unlike the ’685 claims, the
’938 claims’ recitation of the term “approximation” indi-
cates that the claims do not expressly require computa-
tion of the temperature under the scanned area, so long as
the calculation approximates the temperature under the
scanned area. Therefore, while this testimony supports
the jury’s infringement verdict with respect to the ’938
claims, it cannot support the jury’s verdict with respect to
the asserted ’685 claims. We conclude that the jury’s
determination of infringement of ’685 claims 7, 14, and 17
is not supported by substantial evidence.
III. Damages
35 U.S.C. § 284 allows damages “adequate to compen-
sate for the infringement, but in no event less than a
reasonable royalty for the use made of the invention by
the infringer, together with interest and costs as fixed by
the court.” The patent owner, upon proving infringement,
may receive a reasonable royalty or lost profits, but not
both for the same infringing units. Asetek Danmark A/S
v. CMI USA Inc., 852 F.3d 1352, 1362 (Fed. Cir. 2017).
The jury’s determination of the amount of damages is a
fact question that we review for substantial evidence, and
we review the underlying methodology, including con-
sistency of the award with governing legal principles, for
abuse of discretion. Id.Kaz argues both the reasonable royalty and lost prof-
its portions of the jury’s damages award are unsupported
by substantial evidence. It argues that the reasonable
royalty part of the jury’s award translates into a per-unit
rate of 32% of the projected sales price and 71% of Kaz’s
projected per-unit net profit. It argues the hypothetical,
nonexclusive, U.S.-only royalty agreement contemplated
in this case should be set at a rate less than 5.7%, the rate
for the worldwide and exclusive license agreement Kaz
EXERGEN CORP. v. KAZ USA, INC. 19
entered for a different thermometer. Kaz also argues the
lost profits portion of the jury award improperly included
lost profits for CVS stores, where Exergen did not sell any
products.
While a royalty that would have given Exergen 71% of
Kaz’s projected net profit is certainly steep, we do not
review such fact findings de novo. There was substantial
evidence presented at trial which supports the jury’s
conclusion that in a hypothetical negotiation, Kaz would
have been willing to pay such a price to enter the market.
Exergen’s damages expert went through each of the
factors in Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970), explaining why each
relevant factor weighed in favor of a high royalty rate.
For instance, Exergen’s expert explained that the parties
were “fierce competitors” at the time of the hypothetical
negotiation, and Exergen would have known that if it
licensed the patents to Kaz, it would have lost sales.
J.A. 16287. He testified that Exergen had no licenses
with respect to the patents-in-suit, and would have need-
ed to be “highly incentivized” to license the patents for a
technology with “advantages that other products didn’t
have, namely, the noninvasive, the gentle nature of the
product.” J.A. 16294, 16297. He further testified that
Kaz would have been incentivized to “pay a slightly
higher royalty” because there were nine years left on the
patents, which would have been a long time to sit out of a
growing market. J.A. 16296. The jury was not required
to give more weight to Kaz’s license, particularly in light
of mitigating testimony that the agreement was for a
different type of thermometer “of unknown appeal,” was
based on patent applications, and was not between com-
petitors. J.A. 16419–20. Kaz has not presented any
evidence that the jury’s reasonable royalty would not have
been feasible from a business perspective—indeed, Kaz
would have still made 29% of its projected per-unit profit.
The jury was entitled to credit Exergen’s evidence that
20 EXERGEN CORP. v. KAZ USA, INC.
Kaz would have been highly motivated to pay a premium
to enter the market.
The jury’s lost profits award with respect to CVS, the
only retailer disputed on appeal, is also supported by
substantial evidence. Trial testimony established that
CVS offers its own generic products alongside a single
branded product. The jury was entitled to find that had
Kaz’s thermometers not been on the market, CVS would
have chosen Exergen’s competing product to be the
branded product. While “the patentee needs to have been
selling some item, the profits of which have been lost due
to infringing sales, in order to claim damages consisting of
lost profits,” Poly-America, L.P. v. GSE Lining Tech., Inc.,
383 F.3d 1303, 1311 (Fed. Cir. 2004), our precedent does
not require sales to have been lost in any particular way.
Even though the inventor testified that CVS did not carry
Exergen’s products because Exergen previously sued them
for patent infringement, the jury was entitled to find that
in the absence of a feasible alternative product, CVS
would have turned to Exergen despite their history of
litigation. Trial testimony demonstrated that another
major retailer who Exergen had previously sued “got over
it” and later carried Exergen’s product. J.A. 16411–13.
We hold that both portions of the jury’s damage award
are supported by substantial evidence. However, because
we reverse the jury’s finding of infringement for claims 7,
14, and 17 of the ’685 patent, we vacate the damage
award and remand to the district court to determine the
consequences of our holding for the award. The parties
agree that a recalculation of damages would be necessary,
but dispute whether a new trial on damages is warranted.
We leave this to the district court.
IV. Enhanced Damages
We review the district court’s decision on enhanced
damages under 35 U.S.C. § 284 for abuse of discretion.
Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1934
EXERGEN CORP. v. KAZ USA, INC. 21
(2016). In Halo, the Supreme Court rejected our previous
test for willful infringement as one that “unduly confines
the ability of district courts to exercise the discretion
conferred on them.” Id. at 1935 (rejecting In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)).
In this case, the district court granted summary
judgment of no willfulness prior to the Halo decision and
held that because Kaz’s invalidity contentions were not
objectively unreasonable, it need not decide the subjective
prong of Seagate. After additional briefing following the
Supreme Court’s grant of certiorari in Halo, the district
court denied Exergen’s post-trial motion for enhanced
damages. It reviewed the factors in Read Corp. v. Portec,
Inc., 970 F.2d 816, 827 (Fed. Cir. 1992), and held “[e]ven
absent the [Seagate] willfulness threshold, the Read
factors do not compel enhanced damages in this case.”
J.A. 54.
We cannot conclude that the district court abused its
discretion in applying the Read factors and declining to
award enhanced damages. Because the Supreme Court
held that Seagate’s requirement of “a finding of objective
recklessness in every case before district courts may
award enhanced damages” unduly restricted the discre-
tion of the district court, Halo, 136 S. Ct. at 1932, we have
vacated previous enhanced damages decisions premised
only on Seagate’s objective prong. See, e.g., Alfred E.
Mann Found. for Sci. Research v. Cochlear Corp., 841
F.3d 1334, 1345 (Fed. Cir. 2016); WesternGeco L.L.C. v.
ION Geophysical Corp., 837 F.3d 1358, 1363 (Fed. Cir.
2016). But in this case the district court’s summary
judgment of no willfulness based on the objective prong of
Seagate was not the only rationale on the record. The
district court did not clearly err in its later consideration
of the Read factors. For example, the district court found
that no evidence of copying existed, that no concealment
or litigation misconduct had occurred, and that Exergen
was able to “more than adequately vindicate its rights.”
22 EXERGEN CORP. v. KAZ USA, INC.
J.A. 54. Consistent with the exercise of its discretion,
Halo, 136 S. Ct. at 1933, the district court took into
account the particular circumstances of this case and
concluded “on balance, this case is not of an exceptional
nature warranting an award of multiple damages.”
J.A. 54.
Exergen argues a jury must consider willfulness be-
fore the district court may exercise its discretion to en-
hance damages under § 284, but such a blanket rule is
directly contrary to the Supreme Court’s mandate that
courts exercise their discretion free from inelastic rules
like the Seagate test. Halo, 136 S. Ct. at 1933–34; see
Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876
F.3d 1350, 1371–72 (Fed. Cir. 2017) (refusing to adopt a
blanket rule that a district court abuses its discretion by
deciding an issue without briefing by the parties). Even if
the jury had found that Kaz’s infringement was willful,
“an award of enhanced damages does not necessarily flow
from a willfulness finding.” Presidio Components, Inc. v.
Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir.
2017). Under the circumstances of this case, the district
court did not abuse its discretion in analyzing the Read
factors, taking into account the overall circumstances of
the case, and denying enhanced damages. We affirm the
district court’s denial of enhanced damages.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s denial of judgment as a matter of law that the
claims were ineligible under 35 U.S.C. § 101 and its
denial of enhanced damages in this case. We reverse the
verdict of infringement with respect to claims 7, 14, and
17 of the ’685 patent. We see no clear error in the award
of damages for both reasonable royalty and lost profits.
We nonetheless vacate and remand the damage award for
a determination by the district court of the impact our
EXERGEN CORP. v. KAZ USA, INC. 23
reversal of infringement of the ’685 patent claims has on
the damage award.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
EXERGEN CORPORATION,
Plaintiff-Cross-Appellant
v.
KAZ USA, INC.,
Defendant-Appellant
______________________
2016-2315, 2016-2341
______________________
Appeals from the United States District Court for the
District of Massachusetts in No. 1:13-cv-10628-RGS,
Judge Richard G. Stearns.
______________________
HUGHES, Circuit Judge, dissenting.
We determine whether a patent claims eligible subject
matter under 35 U.S.C. § 101 through a two-step test.
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012). At step one, we determine whether the
claims are directed toward a patent-ineligible concept.
Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014). If so, we consider at step two whether the claims
nonetheless embody a sufficiently inventive concept to
transform the claimed invention into a patent-eligible
application. Id. (quoting Mayo, 566 U.S. at 78).
The majority reaches step two, affirming the district
court’s determination that the claims of the ’685 and ’938
patents embody inventive concepts. In my view, the
2 EXERGEN CORP. v. KAZ USA, INC.
claimed inventions merely calculate a law of nature using
conventional, commercially available technology. Follow-
ing the principle that well-understood, routine, and
conventional activities cannot supply an inventive con-
cept, I would find the asserted claims are patent ineligible
under § 101. Thus, I respectfully dissent from the majori-
ty’s conclusion that the asserted claims are patent eligi-
ble.
I
The majority’s opinion does not appear to decide
whether the asserted claims are directed toward an
ineligible concept at step one. The majority recognizes
“[t]here is no dispute . . . that the asserted claims employ
a natural law to achieve their purpose,” Maj. Op. at 7, but
not every invention that makes use of a natural law is
directed toward a law of nature, see Rapid Litig. Mgmt.
Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048–49 (Fed. Cir.
2016). While the district court noted that it was “per-
suaded” of the claims’ patent eligibility at step one, J.A.
110, the majority focuses exclusively on the parts of the
district court’s decision that concern whether the claim
elements were well-understood, routine, or conventional,
see Maj. Op. at 8–11.
In my view, the asserted claims are directed toward
the law of nature that governs the relationship between
core body temperature and forehead skin temperature.
An invention is directed to a patent-ineligible concept
when it “begins and ends” with that concept. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376
(Fed. Cir. 2015). In Ariosa, the claimed methods began
with a cffDNA sample taken from maternal plasma and
ended with isolated, paternally inherited cffDNA. Id.Because both cffDNA’s presence in maternal plasma and
the existence of paternally inherited cffDNA were natural
phenomenon, the claimed methods were directed toward
patent-ineligible natural phenomenon. Id. Relatedly,
EXERGEN CORP. v. KAZ USA, INC. 3
claims are directed to patent-ineligible concepts “when
they amount[] to nothing more than observing or identify-
ing the ineligible concept itself.” See Rapid Litig., 827
F.3d at 1048.
The asserted claims begin and end with a law of na-
ture. The claims cover temperature detectors that calcu-
late a person’s core body temperature. ’685 patent col. 2
l. 60–col. 3 l. 12. The claimed invention first detects
ambient air temperature and the temperature of forehead
skin directly over the temporal artery. Id. at col. 2 ll. 10–
14. It then inputs these temperatures into a “heat bal-
ance equation,” a mathematical representation of the law
of nature that governs the relationship between skin, air,
and core temperatures. Id. at col. 7 l. 3–col. 8 l. 8. This
heat balance equation applies the principle that heat
generated by a person’s body flows throughout the body
and, eventually, into the environment. The prior art
recognized long ago that this principle enabled the calcu-
lation of core body temperature from skin and air temper-
ature measurements. For instance, in 1989 Exergen filed
an application that became U.S. Patent No. 5,012,813,which discloses a radiation detecting thermometer that
uses the heat balance relationship between ear skin
temperature and core temperature. Because heat does
not flow from the body’s core to every area of skin in the
same way, the heat balance approach to measuring core
temperature requires identifying a coefficient that corre-
sponds to the relationship between core temperature and
the temperature of the specific area of skin being meas-
ured. The novel feature of the heat balance equation used
by the ’685 and ’938 inventions is the inventor’s identifi-
cation through empirical testing of the coefficient that
governs the relationship between core temperature and
the temperature of skin above the temporal artery. The
claimed invention uses this heat balance equation to
calculate and display the person’s core body temperature.
Id. at col. 3 ll. 17–19. Unlike in Diamond v. Diehr, where
4 EXERGEN CORP. v. KAZ USA, INC.
a patentable invention used Arrhenius’ equation as an
intermediate step in a rubber curing process, 450 U.S.
175, 191–93 (1981), Exergen’s claimed invention amounts
to nothing more than an observation of the natural phe-
nomenon governed by the heat balance equation. The
invention begins by detecting the equation’s inputs and
ends by displaying its output. Thus, the asserted claims
are directed toward a patent-ineligible law of nature.
At step two, if claims are directed to a patent-
ineligible concept, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78–
79). These transformative elements must supply an
“inventive concept” that ensures the patent amounts to
“significantly more than a patent upon the [ineligible
concept] itself.” Id. (quoting Mayo, 566 U.S. at 72–73)
(alteration in original). Claim elements that recite “con-
ventional, routine and well understood applications in the
art” are insufficient to “supply an inventive concept.”
Ariosa, 788 F.3d at 1378.
Even under a deferential standard of review, the dis-
trict court clearly erred by finding that the claims of the
’685 and ’938 patents embody an inventive concept. The
asserted claims recite a temperature detector that per-
forms a subset of three steps: (1) moving while laterally
scanning over an artery or forehead; (2) obtaining a peak
temperature reading; and (3) taking plural skin tempera-
ture measurements per second. See, e.g., ’685 patent
col. 9 ll. 41–43; ’938 patent col. 10 ll. 60–67. Most of the
claims also recite using a radiation detector. Tempera-
ture-detecting products that make use of these elements
have existed for decades. The district court recognized
that “patents dating from more than 30 years ago dis-
closed the technique of scanning while moving a radiation
detecting device.” J.A. 94. For example, U.S. Patent No.
EXERGEN CORP. v. KAZ USA, INC. 5
3,351,642, issued in 1970, describes an infrared thermom-
eter with a sensor that permits “scanning across a portion
of a patient’s body, for example a forehead.” J.A. 17594.
Similarly, obtaining peak temperatures and taking multi-
ple measurements per second are ubiquitous features in
the prior art. The ’685 and ’938 specifications disclose
that these features are present in Exergen’s other prod-
ucts, including its D501 Industrial Temperature Detector
and prior ear temperature detectors. ’685 patent col. 8 l.
60–col. 9 l. 4; ’938 patent col. 9 ll. 2–15.
At the time of invention, the combination of these el-
ements into a single product was also well-known. For
instance, the district court recognized that Exergen
commercially sold DermaTemp, a radiation detecting
thermometer capable of taking ten readings per second
and tracking peak temperatures. The district court found
that these devices were scanned over skin to “detect hot
spots indicating injury or tumors, or surface temperature
differentials.” J.A. 112. This finding aligns with the
DermaTemp operating manual, which indicates that
DermaTemp could be used to measure forehead tempera-
ture in order to detect surgery side effects. The district
court therefore recognized that prior art products com-
bined skin scanning, obtaining peak temperatures, and
taking multiple temperature measurements per second.
These findings reveal that, aside from its use of a newly
discovered heat balance coefficient, Exergen’s claimed
invention amounts to nothing more than using a preexist-
ing temperature detector to take a conventional and
routine measurement of forehead skin temperature.
Absent the patent-ineligible law of nature, the claimed
invention consists entirely of elements already combined
by the prior art. Thus, the claimed combination of
elements lacks an inventive concept because the combina-
tion was well-understood, routine and conventional at the
time of invention.
6 EXERGEN CORP. v. KAZ USA, INC.
In reaching the opposite conclusion, the district court
legally erred by using a law of nature to supply an in-
ventive concept. The district court never found that the
combination of taking multiple measurements while
scanning laterally across the forehead to determine peak
temperature was not well-understood, routine, and con-
ventional. It only found that there was “no evidence . . .
that these steps were ‘well-understood, routine, [or]
conventional[ly]’ used to detect arterial temperature be-
neath the skin.” J.A. 113 (alterations in original) (empha-
sis added). Rather than finding that the claim elements
were not routine or conventional, the district court fo-
cused on whether those elements were routinely or con-
ventionally used for the purpose of calculating core body
temperature. It differentiated the claimed invention from
the prior art solely on the basis that the claimed invention
“solve[s] a different problem.” J.A. 112.
We rejected identical reasoning in Ariosa. There, the
patentee argued its claimed methods of amplifying and
detecting paternal cffDNA in maternal plasma supplied
an inventive concept because such methods had never
been used on maternal plasma samples. Ariosa, 788 F.3d
at 1379. We noted that the claimed cffDNA amplification
and detection methods were well-understood, routine and
conventional. Id. at 1378. As a result, the patentee’s
argument implied that the inventive concept lied solely in
the natural phenomenon that paternal cffDNA exists in
maternal plasma. Id. at 1379. Although the claimed
methods solved a novel problem, using conventional
techniques for a new purpose did not supply an inventive
concept that amounted to significantly more than the
natural phenomenon to which the claims were directed.
Here, the district court similarly erred. Despite rec-
ognizing that temperature detectors identical to the
claimed invention already existed for other purposes, the
district court reasoned that these prior detectors never
used forehead skin temperature measurements to calcu-
EXERGEN CORP. v. KAZ USA, INC. 7
late core body temperature. Like in Ariosa, this reasoning
implicitly relies upon the relationship between forehead
skin temperature and core body temperature to supply an
inventive concept. Although the invention calculates core
body temperature from forehead temperature, those
calculations merely reflect the natural relationship be-
tween forehead and core body temperatures. Accordingly,
the district court clearly erred by finding an inventive
concept based on the asserted claims’ use of well-
understood, routine, and conventional temperature-
measuring techniques for this new purpose.
The majority attempts to salvage the district court’s
decision by emphasizing the novelty of the heat balance
coefficient. In doing so, the majority misapplies the step
two analysis from the Mayo/Alice framework. Step two 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.’” Alice, 134 S.
Ct. at 2355 (internal quotation marks omitted) (quoting
Mayo, 566 U.S. at 72–73). After identifying an ineligible
concept at step one, we ask at step two “[w]hat else is
there in the claims before us?” Mayo, 566 U.S. at 78.
Clearly, a patent-ineligible law of nature cannot be the
inventive concept that ensures the claimed invention
amounts to significantly more than a patent upon that
law of nature. Yet the majority argues exactly that,
reasoning that Exergen’s temperature detector is “uncon-
ventional” at step two because it uses “for the first time
the coefficient representing the relationship between
temporal-arterial temperature and core body tempera-
ture.” Maj. Op. at 11–12. The majority’s analysis fails to
identify any combination of claim elements that is not
well-understood, routine, and conventional aside from the
use of a newly discovered law of nature. This is unsur-
prising because the prior art contains temperature detec-
tors like DermaTemp that incorporate every element of
8 EXERGEN CORP. v. KAZ USA, INC.
the claimed invention besides the heat balance equation.
To overcome the claimed invention’s lack of an inventive
concept, the majority opinion erroneously conflates step
two with a novelty inquiry. Cf. Mayo, 566 U.S. at 90 (“[I]n
evaluating the significance of additional steps, the § 101
patent-eligibility inquiry and, say, the § 102 novelty
inquiry might sometimes overlap. But . . . to shift the
patent-eligibility inquiry entirely to these later sections
risks creating significantly greater legal uncertainty,
while assuming that those sections can do work that they
are not equipped to do.”).
I am not suggesting that considering the integration
of a law of nature into the claimed invention is improper
at every stage of § 101 analysis. Indeed, step one requires
us to examine the claims holistically in order to determine
whether they are directed to an ineligible concept. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016) (“Rather, the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the speci-
fication, based on whether ‘their character as a whole is
directed to excluded subject matter.’” (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed.Cir.2015))). Upon reaching step two, however, we
focus more narrowly on the claim elements other than the
invention’s use of the ineligible concept to which it is
directed. Accordingly, the majority’s analysis of the
claims as a whole belongs at step one. At either step,
however, for the reasons discussed above, a claimed
invention’s unconventionality, by itself, is not sufficient to
render the claim patent eligible.
II
Based on the foregoing, I would find that the asserted
claims of the ’685 and ’938 patents are directed to the law
of nature that governs the relationship between core body
temperature and forehead skin temperature, and that the
claims lack an inventive concept sufficient to transform
EXERGEN CORP. v. KAZ USA, INC. 9
them into patent-eligible inventions. Because this ren-
ders the asserted claims patent-ineligible subject matter
under § 101, I would not reach the remaining issues on
appeal. Accordingly, I respectfully dissent.