Case: 19-1789 Document: 58 Page: 1 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
XY, LLC, BECKMAN COULTER, INC., INGURAN,
LLC,
Plaintiffs-Appellants
v.
TRANS OVA GENETICS, LC,
Defendant-Appellee
______________________
2019-1789
______________________
Appeal from the United States District Court for the
District of Colorado in No. 1:17-cv-00944-WJM-NYW,
Judge William J. Martinez.
______________________
Decided: July 31, 2020
______________________
PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld
LLP, Washington, DC, argued for all plaintiffs-appellants.
Plaintiffs-appellants XY, LLC, Inguran, LLC also repre-
sented by Z.W. JULIUS CHEN; DANIEL LYNN MOFFETT, KIRT
S. O'NEILL, San Antonio, TX.
ALAN L. BARRY, K&L Gates LLP, Chicago, IL, for plain-
tiff-appellant Beckman Coulter, Inc.
DAVID A. KELLY, Barnes & Thornburg LLP, Atlanta,
GA, argued for defendant-appellee. Also represented by
Case: 19-1789 Document: 58 Page: 2 Filed: 07/31/2020
2 XY, LLC v. TRANS OVA GENETICS, LC
JOSHUA M. KALB, Hunton Andrews Kurth LLP, Atlanta,
GA.
______________________
Before WALLACH, PLAGER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
XY, LLC, Beckman Coulter, Inc., and Inguran, LLC
(collectively, “XY”) appeal the district court’s dismissal of
certain patent-infringement allegations against Trans Ova
Genetics, LC. The district court held asserted claims 1–23
of XY’s U.S. Patent No. RE46,559 ineligible under
35 U.S.C. § 101. The district court also held that XY’s pa-
tent-infringement allegations with respect to certain
claims of U.S. Patent Nos. 6,732,422, 7,723,116, and
8,652,769 were claim-precluded based on a prior lawsuit
filed by XY against Trans Ova. We conclude that the as-
serted claims of the ’559 patent are directed to a patent-
eligible improvement to a method of sorting particles using
flow cytometry technology, not to an abstract idea, and that
the district court did not apply the proper legal standard to
its claim-preclusion analysis. Accordingly, we reverse the
district court’s judgment that the asserted claims of the
’559 patent are ineligible under § 101, vacate the district
court’s claim-preclusion judgment, and remand for further
proceedings.
BACKGROUND
I
The ’559 patent is titled “Enhancing Flow Cytometry
Discrimination with Geometric Transformation.” Flow cy-
tometers can be used as “high speed jet-in-air sorters to
discriminate particles and cells that are only subtly differ-
ent.” ’559 patent col. 1 ll. 35–38. The ’559 patent relates
to “apparatus and methods for real-time discrimination of
particles while being sorted by flow cytometry . . . resulting
in enhanced discrimination between populations of
Case: 19-1789 Document: 58 Page: 3 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 3
particles.” Id. at col. 1 ll. 26–31. For example, the inven-
tion of the ’559 patent “can be used to separate X from Y
bearing sperm,” an application useful in animal husbandry
to “guarantee[] the sex of off-spring.” Id. at col. 1 ll. 38–51.
In the flow cytometry apparatus and methods disclosed
by the ’559 patent, particles may be entrained in a fluid
stream in the flow cytometer and coupled with a light-emit-
ting element, such as a dye. Id. at col. 3 ll. 4–12. Figure 1
illustrates a flow cytometry sort overview:
Id. Fig. 1; see also id. at col. 3 ll. 24–25. After passing
through a laser beam (34), particles coupled to a light-emit-
ting element may emit signals, such as fluorescence, which
are then collected by at least one signal detector, such as a
forward scatter detector (30). Id. at col. 3 ll. 10–15, 24–34.
The “signal detector may be connected to a system . . . in
which signal data indicative of the signals may be pro-
cessed and analyzed in order to determine a sort decision.”
Case: 19-1789 Document: 58 Page: 4 Filed: 07/31/2020
4 XY, LLC v. TRANS OVA GENETICS, LC
Id. at col. 3 ll. 36–40. “While a sort decision is being deter-
mined, particles may pass through a drop delay (35).” Id.
at col. 3 ll. 41–43. Following a sort decision, “a pulse of
charge (37) may be applied to a droplet (23) containing a
particle. Droplets may pass through charged deflection
plates (38) in order to sort particles into a desired sort re-
ceptacle (40).” Id. at col. 3 ll. 44–48.
To distinguish particles and determine a sort decision,
signal data affiliated with each individual particle may be
analyzed, such as by use of a signal processor to “convert[]
signals . . . affiliated with each individual particle into n-di-
mensional parameter data.” Id. at col. 3 ll. 50–54. Signals
and n-dimensional parameter data “may be plotted on a
graph . . . to categorize the data points into a population.”
Id. at col. 3 l. 64 – col. 4 l. 4. When particles are similar
and signals affiliated with the particles vary only slightly,
“the n-dimensional parameter data corresponding to the
signals,” when plotted, “may place data points very close
together,” such that “it may be difficult to categorize the
data points into a population.” Id.
“Conventional technologies may have disregarded
these points that are so close together and may have de-
cided to throw out that particle because it could not have
been distinguished.” Id. at col. 4 ll. 4–7. For example, “us-
ing a typical unaltered light signal detected by a flow cy-
tometer” may not discriminate between “male determining
and female determining sperm cell[s].” Id. at col. 4 ll. 56–
58.
Accordingly, the ’559 patent discloses that “[i]t may be
desirable in embodiments to reconfigure data to enhance
separation between data points,” such as by “geometric
transformation.” Id. at col. 4 ll. 7–14. For example, em-
bodiments of the invention may employ a signal processor
that converts signal data “into n-dimensional parameter
data to which at least one alteration (48) (e.g. rotational
alteration, translation operation, scaling operation, any
Case: 19-1789 Document: 58 Page: 5 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 5
combination of these and the like) may be applied.” Id.
at col. 5 ll. 41–49.
The claimed methods increase spatial separation of
data corresponding to each population at least by “rotation-
ally alter[ing] the n-dimensional parameter data.” Id.
at col. 17 ll. 14–19. For example, embodiments of the
claimed “invention may involve rotating data to increase a
separation of data from male determining cells to female
determining cells.” Id. at col. 5 ll. 58–60; see also id.
at col. 19 ll. 16–21 (similar). The ’559 patent discloses that
“[i]n addition to rotation, it has been found that there may
be a need for tracking and zooming of the data.” Id.
at col. 7 ll. 20–22. Accordingly, in addition to “rotationally
alter[ing] the n-dimensional parameter data,” claimed em-
bodiments of the invention may further include “scaling”
and/or “translating the n-dimensional parameter data.” Id.
at col. 17 ll. 14–19, 48–54, col. 18 ll. 13–22. “These combi-
nations can be significant, for example sex selection may
not be optimally achieved by any other method, hence the
importance of this invention.” Id. at col. 7 ll. 22–25. The
invention’s “[c]larity of delineation may allow each popula-
tion to be selected more accurately than in any other sepa-
ration system.” Id. at col. 6 ll. 54–56.
Claim 1 is the sole independent claim of the ’559 patent
and recites:
1. A method of operating a flow cytometry appa-
ratus with at least n detectors to analyze at least
two populations of particles in the same sample,
the method comprising:
(a) establishing a fluid stream in the flow cytome-
try apparatus with at least n detectors, the at least
n detectors including a first detector and a second
detector;
(b) entraining particles from the sample in the fluid
stream in the flow cytometry apparatus;
Case: 19-1789 Document: 58 Page: 6 Filed: 07/31/2020
6 XY, LLC v. TRANS OVA GENETICS, LC
(c) executing instructions read from a computer
readable memory with a processor, the processor
being in communication with the first detector in
the flow cytometer, to detect a first signal from the
first detector based on individual particles in the
fluid stream;
(d) executing instructions read from the computer
readable memory with the processor, the processor
being in communication with the second detector in
the flow cytometer, to detect a second signal from
the second detector based on the individual parti-
cles in the fluid stream;
(e) executing instructions read from the computer
readable memory with the processor to convert at
least the first signal and the second signal into
n-dimensional parameter data for detected parti-
cles in the sample, wherein the n-dimensional pa-
rameter data for particles from the at least two
populations overlap in at least one of the dimen-
sions;
(f) executing instructions read from the computer
readable memory with the processor to rotationally
alter the n-dimensional parameter data so that
spatial separation of the data from the particles
from the at least two populations in the at least one
dimension that is overlapped is increased;
(g) executing instructions read from the computer
readable memory with the processor to real-time
classify each of the individual detected particles
into one of a first population and a second popula-
tion of the at least two populations based on at
least the rotationally altered n-dimensional pa-
rameter data; and
Case: 19-1789 Document: 58 Page: 7 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 7
(h) using the real-time classification, sorting the in-
dividual particles with the flow cytometer.
Id. at col. 16 l. 54 – col. 17 l. 27.
II
In December 2016, XY sued Trans Ova for infringe-
ment of seven patents relating to technology for sex selec-
tion of non-human mammals. When XY filed its 2016
lawsuit, it had an appeal pending from a 2012 lawsuit
against Trans Ova asserting infringement of different pa-
tents directed to similar technology. See XY, LLC v. Trans
Ova Genetics, L.C.,
890 F.3d 1282 (Fed. Cir. 2018).
Trans Ova filed a motion for judgment on the plead-
ings, arguing that the asserted claims of the ’559 patent are
ineligible under § 101. Applying the Supreme Court’s two-
step framework for determining patent eligibility, the dis-
trict court determined that the ’559 patent claims are inel-
igible under § 101. XY, LLC v. Trans Ova Genetics, LC,
333 F. Supp. 3d 1097, 1102–06 (D. Colo. 2018) (Eligibility
Op.) (applying Alice Corp. v. CLS Bank Int’l,
573 U.S. 208
(2014)). At Alice step one, the district court held that
claim 1 of the ’559 patent was directed to the abstract idea
of a “mathematical equation that permits rotating multi-
dimensional data.”
Id. at 1105. At Alice step two, the dis-
trict court held that the asserted claims lacked an in-
ventive concept because XY admitted that each claim
element was known in the art. See
id. at 1105–06.
Trans Ova also filed a motion to dismiss, arguing that
the district court should hold XY’s infringement allegations
regarding the ’422, ’116, and ’769 patents barred by claim
preclusion based on XY’s 2012 lawsuit. The district court
granted Trans Ova’s motion to dismiss with respect to the
’422, ’116, and ’769 patent-infringement allegations. XY,
LLC v. Trans Ova Genetics, LC,
323 F.R.D. 630, 633–34,
638 (D. Colo. 2018) (Claim Preclusion Op.). The district
Case: 19-1789 Document: 58 Page: 8 Filed: 07/31/2020
8 XY, LLC v. TRANS OVA GENETICS, LC
court stayed proceedings on XY’s remaining causes of ac-
tion pending the outcome of this appeal.
XY appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
DISCUSSION
XY argues that the district court erred in holding the
asserted claims of the ’559 patent ineligible under § 101
and in holding XY’s infringement allegations regarding the
’422, ’116, and ’769 patents barred by claim preclusion. We
address each argument in turn.
I
We hold that the district court erred in granting Trans
Ova’s motion for judgment on the pleadings that the as-
serted claims of the ’559 patent are ineligible under § 101.
We apply regional circuit law in our review of proce-
dural aspects of a motion for judgment on the pleadings.
RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1325–
26 (Fed. Cir. 2017). Applying Tenth Circuit law, we review
de novo the district court’s grant of Trans Ova’s motion for
judgment on the pleadings, accepting as true all facts
pleaded by XY. See Aspenwood Investment Co. v. Martinez,
355 F.3d 1256, 1259 (10th Cir. 2004). Patent eligibility un-
der § 101 is ultimately a question of law that may contain
underlying issues of fact. Berkheimer v. HP Inc.,
881 F.3d
1360, 1365 (Fed. Cir. 2018) (first citing Intellectual Ven-
tures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1338
(Fed. Cir. 2017); and then citing Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc.,
811 F.3d 1314, 1325 (Fed. Cir.
2016). We review a district court’s patent eligibility deter-
mination de novo.
Id.
Section 101 provides that “[w]hoever invents or discov-
ers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor.”
35 U.S.C. § 101.
Case: 19-1789 Document: 58 Page: 9 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 9
“The Supreme Court has identified three types of subject
matter that are not patent-eligible: ‘Laws of nature, natu-
ral phenomena, and abstract ideas are not patentable.’”
CardioNet, LLC v. InfoBionic, Inc.,
955 F.3d 1358, 1367
(Fed. Cir. 2020) (quoting Alice, 573 U.S. at 216). The Su-
preme Court has recognized, however, that “[a]t some level,
‘all inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.’” Al-
ice, 573 U.S. at 217 (ellipses in original) (quoting Mayo Col-
laborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66, 71
(2012)). “Thus, an invention is not rendered ineligible for
patent simply because it involves an abstract concept.”
Id.
(citing Diamond v. Diehr,
450 U.S. 175, 187 (1981)). In-
deed, “applications” of abstract concepts “‘to a new and use-
ful end’ . . . remain eligible for patent protection.”
Id.
(quoting Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
The Supreme Court’s two-step Alice framework guides
courts in determining patent eligibility under § 101. First,
we consider the claims “in their entirety to ascertain
whether their character as a whole is directed to excluded
subject matter.” McRO, Inc. v. Bandai Namco Games Am.
Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346
(Fed. Cir. 2015)). “If the claims are not directed to an ab-
stract idea, the inquiry ends.”
Id. If the claims are directed
to an abstract idea, we proceed to step two and “consider
the elements of each claim both individually and ‘as an or-
dered combination’ to determine whether the additional el-
ements ‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78–79).
Beginning our analysis with Alice step one, we con-
clude that the district court erred when it held that the
claims are directed to “the mathematical equation that per-
mits rotating multi-dimensional data.” Eligibility Op.,
333 F. Supp. 3d at 1105. As Trans Ova’s counsel acknowl-
edged during oral argument, claim 1 of the ’559 patent is
Case: 19-1789 Document: 58 Page: 10 Filed: 07/31/2020
10 XY, LLC v. TRANS OVA GENETICS, LC
not merely directed to a “mathematical equation that per-
mits rotating multi-dimensional data.” Oral Arg. at 22:34–
56, http://oralarguments.cafc.uscourts.gov/default.aspx?fl
=2019-1789.mp3 (characterizing claim 1 of the ’559 patent
as directed to “using math to sort particles in real time” in
a flow cytometer). Rather, the claims are directed to a pur-
portedly improved method of operating a flow cytometry
apparatus to classify and sort particles into at least two
populations in real time, wherein first and second detectors
detect signals from individual particles and a processor
converts the signals to n-dimensional parameter data and
rotationally alters that data to increase spatial separation
among the data, thereby facilitating classification and sort-
ing of each individual particle.
We find the Supreme Court’s decision in Diehr and this
court’s decision in Thales Visionix Inc. v. United States,
850 F.3d 1343 (Fed. Cir. 2017), instructive in our step one
analysis. In Diehr, the Supreme Court held eligible claims
reciting a method of operating a rubber-molding press em-
ploying computer components and the well-known Arrhe-
nius equation to constantly determine the temperature of
the press’s mold, calculate when the optimal cure time was
reached, and automatically open the press at that time.
See
450 U.S. at 179 n.5. The result was “a synthetic rubber
product that ha[d] been perfectly cured—a result hereto-
fore unknown in the art.”
Id. at 193 n.15.
In Thales, we held patent-eligible claims “directed to
systems and methods that use inertial sensors in a non-
conventional manner to reduce errors in measuring the rel-
ative position and orientation of a moving object on a mov-
ing reference frame.” 850 F.3d at 1348–49. By configuring
inertial sensors so as to measure gravitational field and po-
sition information relative to the moving platform, rather
than measuring inertial changes with respect to the earth,
the inventors could “increase[] the accuracy with which in-
ertial sensors measure the tracked object on the moving
frame” and “track the position and orientation of the object
Case: 19-1789 Document: 58 Page: 11 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 11
within the moving platform without input from a vehicle
attitude reference system or calculating orientation or po-
sition of the moving platform itself.” Id. at 1345.
The asserted ’559 patent claims are analogous to the
claims at issue in Diehr and Thales. Like the claims in
Diehr, the asserted claims “describe in detail a step-by-step
method” for accomplishing a physical process.
450 U.S.
at 184. Diehr’s claimed process “mold[ed] precision syn-
thetic rubber” to produce “a synthetic rubber product that
has been perfectly cured,”
id. at 184, 193 n.15, and the
’559 patent’s claimed method classifies and separates indi-
vidual particles from a sample “more accurately than in
any other separation system,” ’559 patent col. 6 ll. 54–56.
Diehr’s claims and the asserted claims of the ’559 patent
each represent a purported improvement to otherwise-
known industrial or laboratory processes through specific
application of mathematical algorithms.
Similarly, the Thales claims and the asserted ’559 pa-
tent claims both recite methods in which at least two sen-
sors or detectors gather data about an object before
mathematical operations are applied to the gathered data
to generate more accurate information about the object
than was previously possible in the art. Thales, 850 F.3d
at 1345–46; ’559 patent col. 6 ll. 54–56, col. 16 l. 54 – col. 17
l. 27. Both sets of claims purport to improve results—“in-
creas[ing] the accuracy with which inertial sensors meas-
ure the tracked object on the moving frame” in Thales, 850
F.3d at 1345, and supplying “the accuracy required to pro-
vide highly pure particle separation” of similar particles in
the ’559 patent, ’559 patent col. 7 ll. 13–16.
As in Diehr and Thales, the asserted ’559 patent claims
“implement[] or appl[y] [mathematical] formula[s] in a
structure or process which, when considered as a whole, is
performing a function which the patent laws were designed
to protect.” Diehr,
450 U.S. at 192; see Thales, 850 F.3d
Case: 19-1789 Document: 58 Page: 12 Filed: 07/31/2020
12 XY, LLC v. TRANS OVA GENETICS, LC
at 1347–48 (quoting Diehr,
450 U.S. at 192). The asserted
claims therefore satisfy the requirements of § 101.
Contrary to Trans Ova’s argument and the district
court’s decision, the ’559 patent claims are not analogous
to those held ineligible in Parker v. Flook,
437 U.S. 584
(1978). The representative claim in Flook “simply pro-
vide[d] a new and presumably better method for calculat-
ing alarm limit values,” requiring nothing more than
updating an alarm limit—a number—through application
of the recited formula.
Id. at 585, 594–95. Though Flook’s
claim was cabined to “updating the value of at least one
alarm limit . . . in a process comprising the catalytic chem-
ical conversion of hydrocarbons,” neither the claim nor the
specification provided any guidance regarding details of
the claimed method.
Id. at 586, 596. The patent applica-
tion at issue contained no “disclosure relating to the chem-
ical processes at work, the monitoring of process variables,
or the means of setting off an alarm or adjusting an alarm
system.”
Id. at 586. Accordingly, the Supreme Court con-
cluded that the patent application was directed to nothing
more than “a formula for computing an updated alarm
limit.”
Id.
Here, by contrast, claim 1 of the ’559 patent recites an
improved method of operating a flow cytometry apparatus
to sort individual particles in the same sample in real time,
and includes a detailed recitation of the means for doing so.
’559 patent col. 6 ll. 54–56, col. 16 l. 54 – col. 17 l. 27.
Though the asserted claims employ formulas to improve
classification and separation of individual particles, the
formulas operate to achieve the improved result of the
claimed method only when combined with the specific de-
tectors and other flow cytometry limitations in the claims.
See
id. at col. 6 ll. 33–56, col. 16 l. 54 – col. 17 l. 27. As the
Supreme Court has stated, “a process is not unpatentable
simply because it contains a law of nature or a mathemat-
ical algorithm.” Diehr,
450 U.S. at 187 (quoting Flook,
437 U.S. at 590); see Thales, 850 F.3d at 1349 (“That a
Case: 19-1789 Document: 58 Page: 13 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 13
mathematical equation is required to complete the claimed
method[s] . . . does not doom the claims to abstraction.”).
Like the claims in Diehr and Thales, claim 1 of the ’559 pa-
tent incorporates applied mathematics in a purported im-
provement to an otherwise-known method to yield an
improved result.
Trans Ova’s and the district court’s analogies to Cleve-
land Clinic Foundation v. True Health Diagnostics LLC,
859 F.3d 1352 (Fed. Cir. 2017), are similarly unavailing.
The Cleveland Clinic claims used a known laboratory tech-
nique to observe a previously unknown natural phenome-
non. 859 F.3d at 1360–61. By contrast, the ’559 patent’s
claimed invention purports to improve a laboratory tech-
nique for detecting, classifying, and sorting particles from
an individual sample, so as to sort each population of par-
ticles “more accurately than in any other separation sys-
tem.” ’559 patent col. 6 ll. 54–56.
Having concluded that the asserted claims of the
’559 patent are not directed to an abstract idea at Alice step
one, we need not reach Alice step two. See Data Engine
Techs. LLC v. Google LLC,
906 F.3d 999, 1007 (Fed. Cir.
2018) (citing Core Wireless Licensing S.A.R.L. v. LG Elecs.,
Inc.,
880 F.3d 1356, 1361 (Fed. Cir. 2018)).
II
Turning to the issue of claim preclusion, the parties’
only dispute concerns whether the district court properly
concluded that XY’s 2012 and 2016 lawsuits present the
same cause of action. XY argues that the district court
erred by failing to compare the currently asserted patent
claims to the previously asserted patent claims to deter-
mine whether the causes of action in the two lawsuits are
essentially the same. We agree.
“In assessing claim preclusion, we apply the law of the
regional circuit in which the district court sits.” SimpleAir,
Inc. v. Google LLC,
884 F.3d 1160, 1165 (Fed. Cir. 2018)
Case: 19-1789 Document: 58 Page: 14 Filed: 07/31/2020
14 XY, LLC v. TRANS OVA GENETICS, LC
(citing Senju Pharm. Co. v. Apotex Inc.,
746 F.3d 1344,
1348 (Fed. Cir. 2014)). “To apply claim preclusion, ‘three
elements must exist: (1) a [final] judgment on the merits in
an earlier action; (2) identity of parties or privies in the two
suits; and (3) identity of the cause of action in both suits.’”
Lenox MacLaren Surgical Corp. v. Medtronic, Inc.,
847 F.3d 1221, 1239 (10th Cir. 2017) (alteration in origi-
nal) (quoting King v. Union Oil Co. of Cal.,
117 F.3d 443,
445 (10th Cir. 1997)). “[W]hether a particular cause of ac-
tion in a patent case is the same as or different from an-
other cause of action has special application to patent
cases, and we therefore apply our own law to that issue.”
Senju, 746 F.3d at 1348 (citing Acumed LLC v. Stryker
Corp.,
525 F.3d 1319, 1323 (Fed. Cir. 2008)).
Our cases define a cause of action based on the trans-
actional facts from which it arises. See SimpleAir, 884 F.3d
at 1165 (first citing Senju, 746 F.3d at 1349; and then cit-
ing Acumed,
525 F.3d at 1323–24). In a patent case, trans-
actional facts include “both the asserted patents and the
accused activity.”
Id. (first citing Senju, 746 F.3d at 1349;
and then citing Acumed,
525 F.3d at 1323–24). “[W]here
different patents are asserted in a first and second suit, a
judgment in the first suit will trigger claim preclusion only
if the scope of the asserted patent claims in the two suits is
essentially the same.” Id. at 1167.
Here, the district court stated the proper test: whether
the scope of the patent claims asserted in the 2012 and
2016 lawsuits was “‘materially’ the same.” Claim Preclu-
sion Op., 323 F.R.D. at 635; see SimpleAir, 884 F.3d
at 1167. But it did not actually address or compare any of
the asserted claims of the ’422, ’116, or ’769 patents to the
patent claims asserted in the 2012 litigation. Instead, the
district court concluded that claim preclusion applied to
XY’s ’422 and ’116 patent-infringement allegations simply
because (1) these patents issued before XY filed the 2012
lawsuit; and (2) XY’s allegations of infringement “address
the same, or substantially the same subject matter as
Case: 19-1789 Document: 58 Page: 15 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 15
previously filed claims and [are] directed at a previously
accused product or process.” Claim Preclusion Op., 323
F.R.D. at 635–36, 638. The district court provided no fur-
ther explanation of why the subject matter of the ’422 and
’116 patent claims is the same as that of the previously as-
serted patent claims. Instead, the district court merely
concluded, without explanation, that the ’422 and ’116 pa-
tents were “part of the same transaction that prompted the
2012 [l]awsuit,” because they were “related in time, origin,
and motivation” to, and would have been “a convenient
trial unit” with, the patents asserted in the 2012 lawsuit.
Id. at 638. The ’769 patent issued after the deadline for XY
to amend its complaint in the 2012 lawsuit without leave
of court. But the district court reasoned that, since the
’769 patent “was a continuation of a patent already in suit,”
and “would be accusing the same Trans Ova products and
processes,” “XY had a duty to move to amend” its complaint
in the 2012 lawsuit to add the ’769 patent. Id.
We find the claim-preclusion issue here materially in-
distinguishable from that in SimpleAir. In SimpleAir, we
vacated the district court’s holding that two patent law-
suits involved the same cause of action. 884 F.3d at 1164,
1171. The district court’s holding was based solely on the
fact that the earlier-asserted patents and the later-as-
serted patents shared a common specification and were
continuations of, and terminally-disclaimed to, the same
parent patent. Id. at 1164. We distinguished claims in ter-
minally disclaimed continuation patents from reexamined
claims, noting that unlike reexamined claims, “terminally-
disclaimed continuation patents could ‘provide larger claim
scope to a patentee than the patentee had under’ the parent
patent.” Id. at 1167 (quoting Senju, 746 F.3d at 1353). Ac-
cordingly, we held that “given the substantively different
requirements of continuation patents as compared to reex-
aminations, the district court erred in holding SimpleAir’s
latest suit to be claim-precluded without any comparison of
Case: 19-1789 Document: 58 Page: 16 Filed: 07/31/2020
16 XY, LLC v. TRANS OVA GENETICS, LC
the asserted claims to the claims involved in” SimpleAir’s
prior lawsuits. Id.
Like SimpleAir, the present case involves later-as-
serted patent claims that “could ‘provide larger claim scope
to a patentee’” than the earlier-asserted patent claims. Id.
(quoting Senju, 746 F.3d at 1353). The ’422 and ’769 pa-
tents are continuations or continuations-in-part of U.S. Pa-
tent No. 6,149,867, which was asserted in the 2012 lawsuit,
and the ’769 patent is terminally-disclaimed over certain
patents asserted in the 2012 lawsuit. The ’116 patent is
closely related to and incorporates by reference the previ-
ously asserted ’867 patent. In its decision, the district court
did not even mention the asserted claims of the ’422, ’116,
or ’769 patents, let alone analyze their scope as compared
to the scope of the patent claims asserted in XY’s 2012 law-
suit, as required under SimpleAir. See 884 F.3d at 1167.
We thus conclude that the district court erred in its claim-
preclusion analysis by failing to compare the scope of the
patent claims asserted in the 2012 lawsuit with the scope
of the patent claims asserted in the 2016 lawsuit.
For its part, Trans Ova argues that we should never-
theless affirm the district court’s judgment because the as-
serted claims of the ’422, ’116, and ’769 patents are
“essentially the same” as the patent claims asserted in XY’s
2012 lawsuit. XY disputes this characterization, arguing
that the asserted claims of the ’422, ’116, and ’769 patents
have a “materially different scope” from the patent claims
asserted in XY’s 2012 lawsuit. Reply Br. 26; see also id.
at 24–29. For example, XY maintains that the ’116 patent
claims’ recitation of a pulsed laser renders them patentably
distinct from the patent claims asserted in the 2012 law-
suit, none of which claim “radiation-based sperm pro-
cessing.” Appellant’s Br. 44–45. Trans Ova acknowledges
that the patents asserted in the 2012 lawsuit “do not ex-
pressly recite . . . using a pulsed laser,” but it maintains
that this omission is “immaterial,” because those patents
encompass using a “laser exciter,” and “pulsed lasers were
Case: 19-1789 Document: 58 Page: 17 Filed: 07/31/2020
XY, LLC v. TRANS OVA GENETICS, LC 17
both well known in the art and an obvious choice to sort
sperm.” Appellee’s Br. 39–40. We leave it to the district
court to decide these issues in the first instance and com-
pare the scope of the asserted claims to those asserted in
the prior litigation.
Accordingly, we vacate the district court’s dismissal of
XY’s infringement allegations as to the ’422, ’116, and
’769 patents and remand to the district court to conduct a
claim-preclusion analysis under the proper standard.
CONCLUSION
We have considered the parties’ remaining arguments
and do not find them persuasive. For the reasons set forth
above, we reverse the district court’s judgment that the as-
serted claims of the ’559 patent are ineligible under § 101.
We vacate the district court’s dismissal of XY’s infringe-
ment allegations based on the ’422, ’116, and ’769 patents,
and remand for further proceedings consistent with this
opinion.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Appellant.
