Hitkansut LLC v. United States ( 2014 )


Menu:
  •             In the United States Court of Federal Claims
    No. 12-303C
    (Filed Under Seal: April 25, 2014)
    (Reissued: May 2, 2014)
    **********************************            )      Patent case; eligibility for patent
    )      protection under 
    35 U.S.C. § 101
    ;
    HITKANSUT LLC, a Michigan                     )      application of the Larson-Miller variant
    corporation, & ACCELEDYNE                     )      of the Arrhenius equation; ineligibility
    TECHNOLOGIES, LTD., LLC, a                    )      of mathematical formulae for patent
    Michigan corporation,                         )      protection; eligibility of novel means
    )      of applying a natural law to obtain more
    Plaintiffs,            )      efficient and beneficial results
    )
    v.                                     )
    )
    UNITED STATES,                                )
    )
    Defendant.             )
    )
    **********************************
    John S. Artz, Dickinson Wright, PLLC, Troy, Michigan, for plaintiffs. With him on the
    briefs were John A. Artz, and Bryan J. Schomer, Dickinson Wright, PLLC, Troy, Michigan.
    Gary L. Hausken, Assistant Director, Commercial Litigation Branch, Civil Division,
    United States Department of Justice, Washington, D.C., for defendant. With him on the briefs
    were Stuart F. Delery, Acting Assistant Attorney General, and John Fargo, Director, Commercial
    Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C. Of
    counsel was Benjamin S. Richards, United States Department of Justice, Washington, D.C.
    OPINION AND ORDER 1
    LETTOW, Judge.
    Following claim construction in this patent case, the government has moved for summary
    judgment, asserting that the claims, as construed, are ineligible for patent protection because they
    relate to nonstatutory subject matter. Def.’s Mot. for Summary Judgment of Invalidity of 
    U.S. Patent No. 7,175,722
     as Claiming Nonstatutory Subject Matter Under 
    35 U.S.C. § 101
     (“Def.’s
    1
    Because this opinion and order might have contained confidential or proprietary
    information within the meaning of Rule 26(c)(1)(G) of the Rules of the Court of Federal Claims
    (“RCFC”) and the protective order entered in this case, it was filed under seal. The parties were
    requested to review this decision and to provide proposed redactions of any confidential or
    proprietary information. No redactions were requested.
    Mot.”), ECF No. 42. Plaintiffs Hitkansut LLC and Acceledyne Technologies, Ltd. LLC
    (collectively, “Hitkansut”) resist this motion and defend the patentability of their claims for
    structural processing methods in 
    U.S. Patent No. 7,175,722
     (“the ’722 patent”). See Pls.’ Opp’n
    to Def.’s Mot. for Summary Judgment & Cross-Mot. for Summary Judgment (“Pls.’ Cross-
    Mot.”), ECF No. 43. 2
    BACKGROUND
    Hitkansut asserts that the patent applicant, Ms. Donna Walker, invented
    a unique method for improving the mechanical and physical properties of
    manufactured metal parts (strength, durability, longevity, etc.) and to do so in a
    much faster way (minutes vs. hours; hours vs. days) and with much less use of
    energy (tens of BTUs vs. thousands of BTUs). The method generally includes
    subjecting the manufactured metal parts (“structures”) to two separate and
    overlapping energy sources [e.g.,] heat and vibration, or heat and magnetism)
    under certain conditions until the state of activation energy of the metals parts
    ha[s] been met.
    Pls.’ Cross-Mot. at 3. Ms. Walker was granted the ’722 patent on February 13, 2007. 3 The
    patent consists of fourteen claims, seven of which are in dispute in this case. See Hitkansut LLC
    v. United States, 
    114 Fed. Cl. 410
    , 413 (2013) (“Hitkansut II”) (claim construction opinion). Of
    those seven claims, Claims 1, 7, 11, and 14 are independent claims, while Claims 2, 6, and 8 are
    dependent claims. 
    Id.
     at 413 n.3. Hitkansut alleges that Oak Ridge and its partners are using the
    method and thus infringing the process set forth in the claims of the patent. See Compl. ¶¶ 22,
    45. 4
    2
    In its complaint, Hitkansut alleges that the United States, acting through Oak Ridge
    National Laboratory (“Oak Ridge” or “the government”), has infringed upon claims 1, 2, 6, 7, 8,
    11, and 14 of the ’722 patent and thus is liable for damages under 
    28 U.S.C. § 1498
    (a). Compl.
    ¶¶ 1, 10.
    3
    The ’722 patent is contained in the electronic record of proceedings in this case at ECF
    No. 23-2.
    4
    Hitkansut alleges that Oak Ridge employs a thermomagnetic processing means in certain
    research and in contractual cooperative research and development agreements (“CRADAs”) with
    private entities, and that those contracts and the work under those contracts infringe the patent.
    See Hitkansut LLC v. United States, 
    111 Fed. Cl. 228
    , 231 (2013) (“Hitkansut I”) (resolving
    disputes over production in discovery of information relating to the CRADAs). Specifically,
    Hitkansut asserts that Ms. Walker disclosed her inventive process to Oak Ridge employees while
    serving as a guest researcher there from 2003 to 2005. Hitkansut II, 114 Fed. Cl. at 415. The
    possibility of a collaborative research effort was discussed, but ultimately no agreement to that
    end was reached. Id.
    2
    On July 9, 2012, the government responded to the complaint by denying the infringement
    allegations in Hitkansut’s complaint. Def.’s Answer, ECF No. 7. Discovery was then
    undertaken, and in due course, the parties filed briefs regarding disputed terms of the claims at
    issue. On May 2, 2013, this court held a claim-construction hearing, and on July 31, 2013, it
    issued its resulting constructions of the pertinent claim terms. See Hitkansut II, 
    114 Fed. Cl. 410
    .
    On September 13, 2013, the government filed its motion for summary judgment, asserting that
    the ’722 patent is invalid because its claims seek to patent nonstatutory subject matter under 
    35 U.S.C. § 101
    . Hitkansut’s cross-motion seeks a declaration that the claims are eligible for patent
    protection. A hearing on the merits was held on January 14, 2014. 5
    STANDARD FOR DECISION
    RCFC 56 states that “[t]he court shall grant summary judgment if the movant shows that
    there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
    matter of law.” RCFC 56(a). A fact is material if it “might affect the outcome of the suit under
    governing law,” Anderson v. Liberty Lobby, Inc., 
    477 U.S. 242
    , 248 (1986), and an issue is
    genuine if it “may reasonably be resolved in favor of either party,” 
    id. at 250
    . The moving party
    bears the initial burden of demonstrating the absence of any genuine issue of material fact.
    Celotex Corp. v. Catrett, 
    477 U.S. 317
    , 323 (1986). The moving party may discharge its burden
    by “pointing out . . . that there is an absence of evidence to support the nonmoving party’s case.”
    
    Id. at 325
    .
    Fundamentally, “[p]atent eligibility under [Section] 101 presents an issue of law,”
    Accenture Global Servs., GmbH v. Guidewire Software, Inc., 
    728 F.3d 1336
    , 1340 (Fed. Cir.
    2013), but “[t]his legal conclusion may contain underlying factual issues,” 
    id.
     at 1341 (citing
    Ultramercial, Inc. v. Hulu, LLC, 
    722 F.3d 1335
    , 1339 (Fed. Cir. 2013) (“[T]he analysis under
    [Section] 101, while ultimately a legal determination, is rife with underlying factual issues.”).
    5
    In connection with the cross-motions respecting statutorily patent-eligible subject matter,
    each party submitted a report by an expert in solid state physics. The government submitted an
    expert report by Dr. Martin E. Glicksman, Research Professor of Materials Science &
    Engineering at the University of Florida and the Allen S. Henry Chair and University Professor
    of Engineering, Mechanical and Aerospace Engineering at Florida Institute of Technology. See
    Def.’s Mot. App. (“Glicksman Report”), at GA 1-2. Hitkansut submitted an expert report by
    Dr. David G. Cahill, Department Head, Donald B. Willett Professor of Engineering, Professor of
    Materials Science and Engineering at the University of Illinois at Urbana-Champaign. See Pls.’
    Cross-Mot. Ex. D (“Cahill Report”), at 1.
    Prior to the hearing held on January 14, 2014, Hitkansut had submitted a supplemental
    expert report by Dr. Cahill in which he sought to clarify a perceived misinterpretation by the
    government of his initial report. See Pls.’ Reply to Def.’s Opp’n to Pls.’ Cross-Mot. (“Pls.’
    Reply”) Ex. P (Supplemental Decl. of Dr. David G. Cahill), ECF No. 51-6. The government
    moved to strike Dr. Cahill’s supplemental report from the record, or in the alternative, to submit
    a sur-reply. Def.’s Mot. to Strike, ECF No. 53. The court denied the motion to strike but
    allowed the government to file a sur-reply. Order of Jan. 14, 2014, ECF No. 56. With the sur-
    reply in hand, all briefing related to the parties’ cross-motions is now complete.
    3
    Further, in Ultramercial, the Federal Circuit explained that “every issued patent is presumed to
    have been issued properly, absent clear and convincing evidence to the contrary.” 722 F.3d at
    1338 (citing CLS Bank Int’l v. Alice Corp., 
    717 F.3d 1269
    , 1304-05 (Fed. Cir. 2013) (Rader,
    C.J., and Linn, Moore, & O’Malley, JJ., concurring in part and dissenting in part) (“[A]ny attack
    on an issued patent based on a challenge to the eligibility of the subject matter must be proven by
    clear and convincing evidence.”), cert. granted sub nom. Alice Corp. v. CLS Bank Int’l, No. 13-
    298, __ U.S. __, 
    134 S. Ct. 734
     (Dec. 6, 2013)). In Ultramercial, the trial court had granted the
    defendant’s motion to dismiss for failure to claim statutory subject matter without first
    conducting claim construction because there was no “reasonable construction that would bring
    the patent within patentable subject matter.” 
    Id. at 1349
     (internal citations and quotations
    omitted). The Federal Circuit disagreed with the standard applied by the trial court, stating that
    to grant a motion to dismiss for failure to claim statutory subject matter, “the only plausible
    reading of the patent must be that there is clear and convincing evidence of ineligibility.” 
    Id. at 1339
     (emphasis omitted). Thus in a motion to dismiss, the burden rests on the defendant to show
    by clear and convincing evidence that the claims are patent ineligible. 
    Id. at 1349
     (“The district
    court erred in requiring the patentee to come forward with a construction that would show the
    claims were eligible.” (emphasis in original)).
    The clear and convincing standard of proof also applies on summary judgment. See
    Liberty Lobby, 
    477 U.S. at 254
     (holding that when deciding a motion for summary judgment, a
    court must bear in mind the applicable evidentiary burden under the substantive law); Laughing
    Rabbit, Inc. v. National Auto. Parts Ass’n, No. C12-0402JLR, 
    2014 WL 556007
    , at *3 (W.D.
    Wash. Feb. 11, 2014); Ariosa Diagnostics, Inc. v. Sequenom, Inc., __ F. Supp. 2d __, No. C11-
    06391 SI, 
    2013 WL 5863022
    , at *4 (N.D. Cal. Oct. 30, 2013); Island Intellectual Prop. LLC v.
    Deutsche Bank AG, No. 09 Civ. 2675 (KBF), 
    2012 WL 386282
    , at *2 (S.D.N.Y. Feb. 6, 2012);
    Medicis Pharm. Corp. v. Acella Pharms. Inc., No. CV 10-1780-PHX-JAT, 
    2011 WL 5321007
    , at
    *4 (D. Ariz. Nov. 3, 2011). Generally, “[a] patentee has no burden to present factual evidence
    affirmatively establishing the validity of its patent, even in support of its own motion for
    summary judgment on the validity issue.” Laughing Rabbit, 
    2014 WL 556007
    , at *3 (citing
    Massey v. Del Labs., Inc., 
    118 F.3d 1568
    , 1573 (Fed. Cir. 1997)). But, to withstand a motion for
    summary judgment brought after claim construction and after some showing of ineligibility by
    the moving party, the patent holder may be required to come forward with a construction
    supporting the eligibility of the claims. See Accenture Global Servs., GmbH v. Guidewire
    Software, Inc., 
    800 F. Supp. 2d 613
    , 618 (D. Del. 2011), aff’d, 
    728 F.3d 1336
    . Nonetheless, the
    defendant (here the government) challenging patentability under Section 101, retains the burden
    of proving the defense by clear and convincing evidence, see Laughing Rabbit, 
    2014 WL 556007
    , at *6, particularly as to the underlying factual underpinnings related to statutory subject
    matter, see Ariosa Diagnostics, 
    2013 WL 5863022
    , at *4 (“[A]n alleged infringer must prove
    invalidity by clear and convincing evidence. . . . In this connection, it is the factual evidence
    itself which must be clear and convincing.”); see also Microsoft Corp. v. i4i Ltd. P’ship, __ U.S.
    __, __, 
    131 S. Ct. 2238
    , 2253 (Breyer, J. concurring) (“[T]he evidentiary standard of proof
    applies to questions of fact and not to questions of law. . . . Thus a fact finder must use the ‘clear
    and convincing’ standard where there are [factual] disputes.” (internal citation omitted)).
    4
    ANALYSIS
    Section 101 concisely states,
    Whoever invents or discovers any new and useful process, machine, manufacture,
    or composition of matter, or any new and useful improvement thereof, may obtain
    a patent therefor, subject to the conditions and requirements of this title.
    
    35 U.S.C. § 101
    . Unfortunately, this brevity has led to murky jurisprudence. Generally, Section
    101 has been interpreted broadly in accord with perceived congressional intent. See Diamond v.
    Chakrabarty, 
    447 U.S. 303
    , 308 (1980) (“In choosing such expansive terms as ‘manufacture’
    and ‘composition of matter,’ modified by the comprehensive ‘any,’ Congress plainly
    contemplated that the patent laws would be given wide scope.”). That said, the Supreme Court
    has developed three categories of subject matter that are patent ineligible under Section 101, viz.,
    laws of nature, natural phenomena, and abstract ideas. Diamond v. Diehr, 
    450 U.S. 175
    , 185
    (1981). These judicially created exceptions constrain patents that “reach too far and claim too
    much” and risk “obstructing rather than catalyzing innovation.” CLS Bank, 717 F.3d at 1277
    (plurality opinion). At the same time, “too broad an interpretation of this exclusionary principle
    could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or
    apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Servs. v.
    Prometheus Labs., Inc., __ U.S. __, __, 
    132 S. Ct. 1289
    , 1293 (2012). Notably, a challenge
    under Section 101 must rely on one or more of these three enumerated exceptions to patent
    eligibility. Challenges of novelty and nonobviousness, for example, are not properly brought
    under Section 101. See CLS Bank, 717 F.3d at 1276. 6 Predictably, however, no sharp, bright
    line demarcates what is not patentable within one of the exceptions to Section 101.
    The government asserts that the claims in the ’722 patent are ineligible because they
    embody a law of nature, a natural phenomenon, or an abstract idea. Def.’s Mot. at 5. There is no
    doubt that the claims at issue in this patent rest upon employing the well-known (at least to
    materials engineers and solid-state physicists) Larson-Miller relationship, but Hitkansut asserts
    that use of the mathematical equation describing that relationship is but a step in this new and
    inventive process. Pls.’ Cross-Mot. at 23-24. 7 The Federal Circuit has recognized that
    6
    
    35 U.S.C. § 102
     prescribes “Conditions for patentability; novelty” (heading), and 
    35 U.S.C. § 103
     specifies “Conditions for patentability; non-obvious subject matter” (heading).
    7
    During claim construction, the court defined the Larson-Miller relationship to mean “a
    processes, which can take the form of the equation 𝑃 = 𝑅 = 𝑇(𝐶 + log 𝑡).” Hitkansut II, 114
    ∆𝐻
    parametric representation of a system of physical properties of a structure subjected to energy
    Fed. Cl. at 426. The Larson-Miller relationship “is a variant of the Arrhenius equation as applied
    in physics rather than chemistry,” 
    id. at 420
    , and stems from a seminal paper, F. R. Larson and
    James Miller, A Time-Temperature Relationship for Rupture Creep Stresses, Transactions of
    ASME, pp. 765-775 (July 1952), that reported test results on a number of metallic alloys for the
    purpose of addressing turbine blade life, Hitkansut II, 114 Fed. Cl. at 419 n.8.
    In defining this term, the court recognized that the relationship can be derived from
    plots of experimental data, as well as from the equation. Id. at 425. For quotidian application,
    5
    “difficulty lies in consistently and predictably differentiating between, on the one hand, claims
    that would tie up laws of nature, natural phenomena, or abstract ideas, and, on the other, claims
    that merely ‘embody, use, reflect, rest upon, or apply’ those fundamental tools.” CLS Bank, 717
    F.3d at 1277 (quoting Mayo, __ U.S. at __, 
    132 S. Ct. at 1293
    ). That is the differential analysis
    before the court.
    A. Supreme Court Precedent
    Five key Supreme Court cases in this area inform the court’s assessment of the patent
    eligibility of the claims at issue in this case.
    1. Gottschalk v. Benson.
    In 1972, the Supreme Court decided Gottschalk v. Benson, 
    409 U.S. 63
     (1972). The
    patent applicant claimed a “method of programming a general-purpose digital computer to
    convert signals from binary-coded decimal form into pure binary form.” Benson, 
    409 U.S. at 65
    .
    The method consisted of an algorithm that could be used to solve the mathematical problem of
    converting one form of numerical representation to another. 
    Id.
     Although the patent applicant
    “discovered” the mathematical formula, the court held that even a previously unknown
    mathematical formula could not be patented. 
    Id. at 67-68
    ; see also Parker v. Flook, 
    437 U.S. 584
    , 585 (1978) (explaining the Court’s holding in Benson). The claimed method did not require
    use of a new technology and could be performed by hand. Benson, 
    409 U.S. at 67
    . Moreover,
    use of the algorithm was not confined to any particular field or specific use. 
    Id. at 64
    . The Court
    described the claim for which a patent was sought as “so abstract and sweeping as to cover both
    known and unknown uses of the [binary-coded decimal] to pure binary conversion.” 
    Id. at 68
    .
    The Court discussed a number of prior cases, including Samuel Morse’s patent application,
    explaining that Morse’s last-stated claim had been held to be ineligible because it could
    conceivably have prohibited all future inventions relying on “electromagnetism, however
    developed, for marking or printing intelligible characters, signs, or letters, at any distances.” 
    Id.
    Contrastingly, his other claims more specific to using electromagnetism to produce
    distinguishable signs for telegraphy, were patent eligible. 
    Id.
    the chief practical problem appears to be defining the constants for the equation. There is
    imprecision in the Larson-Miller relationship because of built-in assumptions, as the plaintiffs’
    expert recognized, stating,
    The Larson[-]Miller relationship assumes that the rate of creep is independent
    of time and that this steady-state creep rate is described by an Arr[he]nius
    relationship. While this description is often a good approximation and
    certainly of great utility, there is no fundamental reason that the creep rate
    must be independent of time, or that the activation energy must be independent
    of time, or that the ‘modified rate constant’ must be independent of time.”
    Cahill Report at 3. For purposes of this opinion, the phrases “Larson-Miller relationship” and
    “Larson-Miller equation” will be used interchangeably.
    6
    2. Parker v. Flook.
    Six years later, the Court decided Flook, a case in which an applicant sought to patent a
    method of updating “alarm limits” during catalytic conversion of hydrocarbons. 
    437 U.S. at 586
    .
    An alarm limit is a set number beyond which an alarm may signal the “presence of an abnormal
    condition indicating either inefficiency or perhaps danger.” 
    Id. at 585
    . During certain processes,
    operating conditions such as temperature, pressure, and flow rates are constantly monitored to
    ensure they do not exceed the assigned alarm limits. 
    Id.
     Often, the alarm limit must be
    continually updated throughout the process. 
    Id.
     The patent application described a three-step
    method for updating alarm limits, consisting of: (1) measuring the present value of a condition,
    (2) plugging that value into an algorithm developed by the applicant to calculate an updated
    alarm-limit value, and (3) adjusting the alarm-limit to the updated value. 
    Id.
     The Court
    concluded that the method was not patentable. 
    Id. at 594
    . It found that the only addition to the
    prior art was using this mathematical formula to update the alarm limits throughout the process.
    
    Id. at 585-86, 594-95
    . The Court rejected the applicant’s argument that his method, unlike the
    method at issue in Benson, was patent eligible due to the presence of a specific post-solution
    activity (updating the alarm limit) and a limitation to a particular field (the catalytic chemical
    conversion of hydrocarbons in the petrochemical and oil-refining industries). 
    Id. at 589-90
    . The
    Court analyzed the claimed method by asking whether, assuming the mathematical formula had
    been well-known, the applicant had invented a mode of applying it. See 
    id.
     at 592 (citing the
    English case of Neilson v. Harford, (1844) 151 Eng. Rep. 1266 (L.R. Exch.) 1273-74; 1 Web.
    Pat. Cases 295, 371). While acknowledging that a claim does not become ineligible simply
    because it makes use of a law of nature or a mathematical algorithm, 
    id. at 590
    , the Court found
    that without the algorithm, the application considered as a whole contained no patentable
    invention, 
    id. at 594
    . The practice of monitoring chemical processes and updating alarm limits
    was already well-known. 
    Id. at 594-96
    .
    3. Diamond v. Diehr.
    The next decision Diehr, is of particular importance to this case because of the five key
    cases, it is the sole instance where the Court held that that the claimed invention, which made
    heavy use of a known algorithm, contained sufficient extra steps to constitute eligible subject
    matter. 
    450 U.S. at 184
    . It also, as here, pertains to a specific application of the Arrhenius
    equation. 
    Id.
     at 177 & n.2. In Diehr, the claims related to “a process for molding raw, uncured
    synthetic rubber into cured precision products.” 
    Id. at 177
    . The rubber industry had been unable
    to uniformly and accurately cure rubber because there was no means to measure precisely the
    temperature inside the molding press, making it difficult to determine a specific mold time. 
    Id. at 177-78
    . The method at issue in the patent consisted of using a thermocouple to continuously
    measure the actual temperature inside the mold and feeding that information to a computer,
    which would use it to continually re-solve the Arrhenius equation to determine an accurate
    curing time and then send a signal from the computer to open the mold once that time had been
    reached. 
    Id. at 178-79
    . Although solving the Arrhenius equation was essential to the process
    and an application of the equation alone would be ineligible subject matter, the Court held that
    the series of other specific steps related particularly to curing rubber rendered this specific use of
    the equation patent eligible. 
    Id. at 187
    . The Court left open the question of whether the process
    might validly be attacked on grounds of lack of novelty under Section 102 or obviousness under
    7
    Section 103. 
    Id. at 191
     (referring to 
    35 U.S.C. §§ 102
    , 103).
    In sum, Diehr held that “when a claim containing a mathematical formula implements or
    applies that formula in a structure or process which, when considered as a whole, is performing a
    function which the patent laws were designed to protect (e.g., transforming or reducing an article
    to a different state or thing), then the claim satisfies the requirements of [Section] 101.” 
    450 U.S. at 192
    . The court distinguished Flook on the ground that the claims in Flook did not
    “explain how the variables used in the formula were to be selected, nor did the application
    contain any disclosure relating to chemical processes at work or the means of setting off an alarm
    or adjusting the alarm limit.” 
    Id.
     at 192 n.14.
    4. Bilski v. Kappos.
    More recently, in 2010, the Supreme Court revisited its jurisprudence regarding Section
    101 in Bilski v. Kappos, __ U.S. __, __, 
    130 S. Ct. 3218
     (2010). In Bilski, the patent applicant
    sought to patent “a claimed invention that explain[ed] how buyers and sellers of commodities in
    the energy market c[ould] protect, or hedge, against the risk of price changes.” __ U.S. at __, 
    130 S. Ct. at 3223
    . Claim 1 of the patent described a series of instructions explaining how to hedge
    risk, and Claim 4 transformed those steps into a mathematical formula. 
    Id.
     The Court held the
    claims to be an abstract idea and thus ineligible subject matter. 
    Id.
     at __, 
    130 S. Ct. at 3231
    . In
    doing so, it rejected a machine-or-transformation test applied by the Federal Circuit. See 
    id.
     at
    __, 
    130 S. Ct. at 3225-29
    . A majority of the Federal Circuit had proposed that a process or
    method could only be patent eligible if it was “tied to a particular machine or apparatus” or it
    “transformed a particular article into a different state or thing,” In re Bilski, 
    545 F.3d 943
    , 954
    (Fed. Cir. 2008), but the Supreme Court held that this postulated test was too limited and at odds
    with Congressional intent, Bilski, __ U.S. at __, 
    130 S. Ct. at 3227
    . The Court acknowledged
    that the Federal Circuit’s machine-or-transformation test, however, “may well provide a
    sufficient basis for evaluating processes similar to those in the Industrial Age — for example,
    inventions grounded in a physical or other tangible form.” 
    Id.
     8 Ultimately, the court held that
    any explanation regarding how to hedge risk merely described an abstract idea, and was
    therefore patent ineligible. 
    Id.
     at __, 
    130 S. Ct. at 3229-30
    . The Court emphasized that its
    holding was intended to be narrow and based on its prior decisions in Benson, Flook, and Diehr.
    
    Id.
     at __, 
    130 S. Ct. at 3229
    . 9
    8
    Conceptually, the machine-or-transformation test had been applied in Diehr, which had
    stated that “transformation and reduction of an article to a different state or thing is the clue to
    the patentability of a process claim that does not include particular machines.” 
    450 U.S. at 184
    (emphasis added) (internal citations and quotations omitted). The “clue” was derived from an
    early case in the Supreme Court, Cochrane v. Deener, 
    94 U.S. 780
     (1876), in which the Court
    approved the patentability of a process for milling superfine flour by a method of separating
    impurities and middlings-meal from the flour, separating the impurities from the middlings-meal,
    and then regrinding the middlings. 94 U.S. at 785. The improved process was said by the Court
    to be patentable without regard to any special arrangement of machinery. Id.
    9
    The Court also rejected a proposal to declare all business methods to be ineligible. Id. at
    __, 
    130 S. Ct. 3228
    -29.
    8
    5. Mayo v. Prometheus.
    As of this writing, the Supreme Court’s latest decision is Mayo, __ U.S. __, 
    132 S. Ct. 10
    1289. The claim at issue concerned a process to help doctors determine whether a given
    dosage of a thiopurine drug was too low or too high. 
    Id.
     at __, 
    132 S. Ct. at 1294
    . “The claims
    purport[ed] to apply natural laws describing the relationships between the concentration in the
    blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective
    or induce harmful side-effects.” 
    Id.
     Individuals metabolize thiopurine compounds at different
    rates, so effective dosing requires individual measurements. 
    Id.
     at __, 
    132 S. Ct. at 1295
    . The
    patented “invention” was the precise identification of correlations between the level of a
    metabolite’s presence in a patient’s bloodstream and the appropriateness of the given thiopurine
    drug dosage. 
    Id.
     Prometheus Labs, the patent holder, sold diagnostic tests that embodied the
    patented process. 
    Id.
     Mayo purchased these diagnostic tests until it developed its own
    diagnostic test to determine metabolite levels and recommend an increase or decrease in dosage.
    
    Id.
     at __, 
    132 S. Ct. at 1295-96
    .
    The Federal Circuit had held the claims were patent eligible because they specified
    certain steps apart from the natural law, such as administering a thiopurine drug and determining
    the resulting metabolite level. Prometheus Labs., Inc. v. Mayo Collaborative Servs., 
    628 F.3d 1347
    , 1354-55 (Fed. Cir. 2010). The Supreme Court reversed, determining that the “extra steps”
    identified by the Federal Circuit were insufficient to transform the unpatentable natural law of
    how an individual clinically responds to a certain drug into a patent-eligible application of that
    law. Mayo, __ U.S. at __, 
    132 S. Ct. at 1297-98
    . These extra steps only involved “well-
    understood, routine, conventional activity previously engaged in by researchers in the field.” 
    Id.
    at __, 
    132 S. Ct. at 1294
    . The government, as amicus curiae, argued that the claims were patent
    eligible, but should fail under the patentability requirements of Sections 102 and 103. 
    Id.
     at __,
    
    132 S. Ct. at 1303
    . The court rejected this argument, stating that such an approach would render
    the law-of-nature exception to Section 101 a “dead letter” and was inconsistent with prior
    decisions. Id.
    6. Synopsis.
    The Federal Circuit recently identified four basic themes running through these cases.
    First, patentees should not be allowed to preempt the fundamental tools of scientific discovery.
    CLS Bank, 717 F.3d at 1280-81 (plurality op.) (“What matters is whether a claim threatens to
    subsume the full scope of a fundamental concept, and when those concerns arise, we must look
    for meaningful limitations that prevent the claim as a whole from covering the concept’s every
    practical application.”); see also Mayo, __ U.S. at __, 
    132 S. Ct. at 1301
     (“The Court has
    repeatedly emphasized . . . a concern that patent law not inhibit further discovery by improperly
    tying up the future use of laws of nature.”). Second, subject-matter eligibility should not rest on
    a patent draftsman’s skill, i.e., patent ineligible subject matter cannot be rendered eligible by
    “highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution
    activity.” CLS Bank, 717 F.3d at 1281 (plurality op.). Third, a claim-by-claim approach that
    10
    The Supreme Court granted certiorari in CLS Bank and heard oral arguments on March
    31, 2014.
    9
    avoids “rigid line drawing” is most appropriate. Id. Lastly, the court must consider each claim
    as a whole and not engage in dissecting the claims into components. Id. at 1298 (Rader, C.J. and
    Linn, Moore & O’Malley, J.J., concurring in part and dissenting in part); see also Diehr, 
    450 U.S. at 189
     (“It is inappropriate to dissect the claims into old and new elements and then to
    ignore the presence of old elements in the analysis.”).
    B. The Claims in This Case
    Independent claims 1, 7, 11, and 14 of the ’722 patent are at issue. 11 The government
    asserts that each of these independent claims addresses nonstatutory subject matter because, as
    written, they constitute nothing more than a recitation of the Larson-Miller relationship and then
    a direction to “apply it.” Def.’s Mot. at 6-7. Although the government engaged in a claim-by-
    claim analysis, its conclusions for each claim remain the same. See Def.’s Mot. at 22-39. The
    government also asserts that even the most detailed claim, Claim 1, is insufficiently limited and
    risks preempting both known and unknown uses of the underlying natural law. Def.’s Mot. at
    23-24.
    Hitkansut on the other hand points to the presumption that a patent is validly granted and
    asserts that the patented claims set out a new and useful method as shown by ongoing efforts by
    Oak Ridge to commercialize the method. Pls.’ Cross-Mot. at 3, 7. According to plaintiffs, “[t]he
    claims of the ’722 [p]atent merely employ the Larson-Miller relationship to assist in determining
    the conditions at which to apply the inventive process for improving the properties of
    manufactured metal structures in an accelerated manner through the simultaneous application of
    two energy sources.” Id. at 22. 12 Hitkansut seeks to refute the government’s argument that the
    patent risks broadly preempting use of the Larson-Miller relationship by stating that the Larson-
    Miller relationship is only used as a guideline in applying multiple energy processes “in order to
    reach a desired useful and unexpected result.” Id. at 18.
    11
    Regarding the other claims in dispute, Claims 2 and 6 are dependent upon Claim 1, and
    Claim 8 is dependent upon Claim 7.
    12
    Supported by the patent specification, Hitkansut makes repeated references to the
    purpose of the invention as being to improve the physical properties of metal structures. See,
    e.g., Pls.’ Cross-Mot. at 21 (“[T]he claims . . . cover a process where two different energy
    sources are used to accelerate changes to the physical and mechanical properties of a metal
    structure.”). This emphasis narrows the breadth and scope of the claims beyond the court’s
    claim construction. The court previously recognized that the claims are not limited to metallic
    structures. Specifically, the term “structure” as used in the claims was defined to mean “a
    physical object that has been constructed or manufactured and to which the claimed invention is
    applied.” Hitkansut II, 114 Fed. Cl. at 416. Similarly, plaintiffs’ references to “acceleration”
    contradict the court’s construction of the terms at issue, because the court rejected inclusion of
    acceleration in construing the claim terms, as discussed infra, at 16-17. See Hitkansut II, 114
    Fed. Cl. at 421. These divergent aspects of plaintiffs’ briefs, however, do not affect the outcome
    of the pending cross-motions for summary judgment.
    10
    These counter-arguments will be addressed on a claim-by-claim basis beginning with
    independent Claim 14 in the ’722 patent.
    1. Claim 14.
    Claim 14 describes:
    [1] A method of determining operational settings and time values for
    concurrent application of multiple energy forms to a structure to change a
    physical property of the structure, the method comprising:
    [2] determining a first parameter according to a desired physical property
    value for the structure and according to a first order rate relationship for a first
    energy process that relates application of a first energy to the structure and the
    physical property;
    [3] determining a second parameter according [to] the desired physical
    property value and according to a first order rate relationship for a second energy
    process that relates application of a second energy to the structure and the
    physical property;
    [4] selecting a first one of a time value and an operational setting for the
    first energy process; and
    [5] selecting a second one of the time value and the operational setting
    according to the first and second parameters, according to the first order rate
    relationship for the first energy process, and according to the first one of the time
    value and the operational setting;
    [6] wherein the first order rate relationship for the first energy process is a
    first Larson[-]Miller relationship that relates application of the first energy to the
    structure and the physical property, and wherein the first order rate relationship
    for the second energy process is a second Larson[-]Miller relationship that relates
    application of the second energy to the structure and the physical property.
    ’722 patent, Claim 14.
    The first clause of the claim accurately describes it. Claim 14 is a method for
    determining variables in the Larson-Miller relationship that would guide the application of two
    energy processes to a structure. The claim, however, never directs any application of specific
    energy processes, nor does it focus on what “physical property” is to be changed on what type of
    “structure.” As such, Claim 14 essentially seeks to patent a method for solving the Larson-
    𝑟 = 𝐴′ 𝑒
    𝐸𝑎
    −
    Miller relationship, “a case specific derivation of the well-known . . . Arrhenius equation,
    𝑅𝑔𝑇
    .” Def.’s Mot. at 2; see also Def.’s Mot. at 39.
    According to clauses two and three of this claim, two “parameters” – one for each energy
    process – are separately determined according to a desired physical property value for the
    structure and a “first order rate relationship” related to the application of the energy process to
    the structure, which in this claim is defined as a Larson-Miller relationship. The parameters are
    then used to determine the “operational settings and time values for concurrent application of
    multiple energy forms to a structure to change a physical property of the structure.” ’722 patent,
    11
    Claim 14, clause 1. The court agrees with the government that Claim 14 merely describes how
    to determine the variables in the Larson-Miller relationships.
    This claim consequently exhibits the same characteristics as those held to be ineligible in
    Benson and Flook. In Benson, the mathematical formula for conversion of binary-coded decimal
    to pure binary form was nothing other than an algorithm, even if only recently discovered, and an
    algorithm cannot be patented. 
    409 U.S. at 68
    . In Flook, the court rejected the patent applicant’s
    attempt to patent a mathematical formula for updating alarm limits during catalytic conversion of
    hydrocarbons. 
    437 U.S. at 594
    . The court explained that the “patent application does not
    purport to explain how to select the appropriate margin of safety, the weighting factor, or any of
    the other variables. Nor does it purport to contain any disclosure relating to the chemical
    processes at work, the monitoring of process variables, or the means of setting off an alarm or
    adjusting an alarm system.” 
    Id. at 584
    . In this case, while Claim 14 arguably attempts to explain
    how to select variables, it does so only by directing the selection of a desired physical property of
    a structure (clauses 2 and 3) and an operational setting or time value (clause 4) and then directing
    the solution of the Larson-Miller relationship for the unknown variable (clause 5). There is no
    further explanation of how to use the equation to achieve any specified outcome. Equations are
    ineligible, in part, because of the fear that it could stifle invention – both known and unknown
    uses of an equation would be barred. See Benson, 
    409 U.S. at 68
    . Moreover, the Supreme Court
    has acknowledged that claims purporting to patent nothing more than application of an equation,
    even in a specified field, are unlikely to be eligible. Flook, 
    437 U.S. at 590
     (“The notion that
    post-solution activity, no matter how conventional or obvious in itself, can transform
    unpatentable principle into a patentable process exalts form over substance.”). Claim 14 falls
    well within the prohibition on patenting calculations of mathematical formulae.
    2. Claims 1, 7, and 11.
    The remaining claims rely heavily on use of the Larson-Miller relationship, and the
    inquiry becomes whether any of the remaining claims contain sufficient inventive aspects, post-
    solution activity, or limiting steps to turn “unpatentable principle into a patentable process.”
    Flook, 
    437 U.S. at 590
    . In Mayo, although ultimately holding a clinical diagnostic method to be
    ineligible, the Supreme Court acknowledged that a law of nature can be transformed into a
    patent-eligible application of such a law, but this requires more than “simply stat[ing] the law of
    nature while adding the words ‘apply it.’” __ U.S. at __, 
    132 S. Ct. at 1294
    . Presumably the
    Court’s logic reaches all of the judicially created exceptions to Section 101, including
    mathematical formulae.
    Notably, Claims 1, 7, and 11 all detail “a method of changing a physical property of a
    structure,” as compared to Claim 14, which explicitly relates to a method for determining
    operational settings and time values. In Bilski, while the Supreme Court rejected the Federal
    Circuit’s attempts to create a per se “machine-or-transformation” test to determine patent
    eligibility under Section 101, the Court did opine that a transformation or use with a machine
    could be a “useful clue,” to patent eligibility but was too limiting. Bilski, __ U.S. at __, 
    130 S. Ct. at 3226
    . Such a clue would have particular utility “for evaluating processes similar to those
    in the Industrial Age.” 
    Id.
     at __, 
    130 S. Ct. at 3227
    . The Supreme Court considered that a claim
    may be eligible even if it does not satisfy the machine-or-transformation test. 
    Id.
     The Court
    12
    made no comment on whether something that does satisfy the machine-or-transformation test
    might be ineligible under Section 101 for other reasons. In Mayo, however, the Court elaborated
    that even though the machine-or-transformation test is an important and useful clue, it does not
    “trump[] the ‘law of nature’ exclusion.” __ U.S. at __, 
    132 S. Ct. at 1303
    .
    The government argues that the series of limiting steps that appear in Claims 1, 7, and 11
    are nothing more than “providing” steps consisting of conventional post-solution activity. Def.’s
    Mot at 6. According to the government, this conventional post-solution activity is wholly
    insufficient to convert a patent-ineligible equation into a patent-eligible application of it. 
    Id.
     In
    this respect, the court acknowledges that the government correctly identifies a key determination
    to be made, i.e., whether the claims at issue are more like those in Flook or Diehr, id. at 12. Both
    prior cases involved method claims related to physical processes, similar to the claims at issue
    here, but the Supreme Court reached differing conclusions. Id. at 11-16.
    (a.) Claim 7.
    Claim 7 provides:
    A method of changing a physical property of a structure, comprising:
    [1] providing a first energy to a structure by performing a first energy process
    according to an operational setting, at least one of the operational setting and a
    time value being selected according to a first order rate relationship for the first
    energy process, according to a first order rate relationship for a second energy
    process, and according to a desired physical property value; and
    [2] providing a second energy to the structure by performing the second
    energy process;
    [3] wherein the first and second energy processes are performed concurrently
    for at least the time value;
    [4] wherein the first order rate relationship for the first energy process
    relates application of the first energy to the structure and a physical property of
    the structure;
    [5] wherein the first order rate relationship for the second energy process
    relates application of the second energy to the structure and the physical property;
    [6] wherein the first and second energy are different;
    [7] wherein the total energy provided to the structure by the first and second
    energy processes is above an activation energy for the material of the structure;
    and
    [8] wherein the first order rate relationship for the first energy process is a
    first Larson[-]Miller relationship that relates application of the first energy to the
    structure and the physical property, and wherein the first order rate relationship
    for the second energy process is a second Larson[-]Miller relationship that relates
    application of the second energy to the structure and the physical property.
    ’722 Patent, Claim 7.
    13
    Claim 7 describes a method of concurrently applying two energy processes to a structure
    with each energy process governed by a separate Larson-Miller relationship. Clauses 4 and 5
    expressly state that each energy process is governed by a separate Larson-Miller relationship.
    Using the Larson-Miller relationship in this straightforward manner is not an inventive concept;
    it amounts to no more than reciting an unpatentable equation and then stating, “apply it,” which
    was expressly ruled inappropriate by the Supreme Court in Mayo. See Mayo, __ U.S. at __, 
    132 S. Ct. at 1294
    . The inclusion of the concurrent application of the energy processes adds little or
    nothing to the patentability evaluation because the claim attributes no special consequences to
    concurrent application. Claim 7 thus is ineligible for patent protection.
    (b.) Claims 11 and 1.
    Claims 11 and 1 are conceptually distinct from Claims 14 and 7. The government claims
    that the entirety of the ‘722 patent “amounts to nothing more than the discovery . . . that a
    predictable relationship exists between the application of multiple energies to a material and the
    changes in the physical properties of that material.” Def.’s Reply to Pls.’ Cross-Mot. & Resp.
    (“Def.’s Reply”) at 4. In support, the government points to the expert report submitted by the
    plaintiffs’ expert, Dr. Cahill, who stated that Ms. Walker “discovered the fact that accelerated
    kinetics produced by an oscillatory strain can be described by a modification of the Larson[-
    ]Miller relationship.” 
    Id.
     (citing the Cahill Report at 4). According to the government, its
    expert, Dr. Glicksman, took the position that the ’722 patent “describe[s] conventional and well-
    known principles of materials engineering, [i.e.], that the application of energies to a material
    will alter certain physical properties of the material in a predictable manner.” Def.’s Reply at 4
    (indirectly referring to the Glicksman Report at GA 17). Independent Claims 1 and 11, however,
    do not merely restate straightforward applications of the known Larson-Miller relationship. The
    Larson-Miller relationship itself does not predict that concurrent application of two energy
    processes according to a combined first order rate relationship is a more efficient method of
    changing the physical properties of a structure.
    Claim 11 most directly states the innovation in Ms. Walker’s claimed method. It
    describes:
    A method of changing a physical property of a structure, comprising:
    [1] providing a first energy to a structure by performing a first energy
    process according to an operational setting;
    [2] providing a second energy to the structure by performing a second
    energy process;
    [3] wherein the first and second energy processes are performed
    concurrently to provide energy above an activation energy for the material of the
    structure for at least a time value;
    [4] wherein one of the operational setting and the time value are selected
    according to a desired physical property value and according to a first order rate
    relationship that relates concurrent application of the first and second energy to
    the structure and the physical property of the structure; and
    14
    [5] further comprising determining the Larson[-]Miller relationship that
    relates concurrent application of the first and second energy to the structure and to
    the physical property of the structure.
    ’722 patent, Claim 11 (emphasis added). Clause 4 describes the use of a single “first order rate
    relationship that relates concurrent application of the first and second energy to the structure and
    the physical property of the structure” to determine the operational setting and the time value.
    ’722 patent, Claim 11, clause 4. By combining the two energy processes into a single first order
    rate relationship, the patent claims that the process can be more efficient by expending less
    energy or requiring less time, or both. See ’722 patent, col. 2, lines 33-38 (“The concurrent
    provision of multiple energy types in accordance with the present invention may be
    advantageously employed to significantly reduce the time and/or energy required to change a
    physical property of interest, such as reducing remaining internal stress in manufactured parts or
    other structures, compared to previous technologies.”) The patent specification gives explicit
    examples of the practicability obtained by using concurrent applications of energy. One such
    example disclosed stress relief on aluminum samples treated with thermal and vibrating energy.
    See ’722 patent, col. 17, line 52 through col. 18, line 26. The specification reported that “the
    inventive process, in four minutes, stress-relieves the fourth sample[, the one treated with
    concurrent energies,] sufficiently to meet the desired stress reduction goal in less time than either
    the vibration only or the thermal only techniques of the other samples.” ’722 patent, col. 18,
    lines 22-26. The specification additionally lists a series of advantages that may result from the
    concurrent application of energies to a structure, including being able to reduce applied
    temperatures, “e.g., keeping the structure temperature below melting or other critical
    temperatures for the structure material,” or “without melting or altering the temper of the
    material,” and nonetheless obtaining desired physical changes to the material. ’722 patent, col.
    15, lines 57-58, line 62.
    This concept, while largely reliant on the Larson-Miller relationship, discloses a new and
    more efficacious method of applying it. See Mayo, __ U.S. at __, 
    132 S. Ct. at 1293
     (‘“[A]n
    application of a law of nature or mathematical formula to a known structure or process may well
    be deserving of patent protection.’” (quoting Diehr, 
    450 U.S. at 187
    ) (emphasis in original)). 13
    In Diehr, the underlying mathematical equation that determined at what point in the process a
    rubber mold should be opened was not patent eligible, but a method for applying that equation
    more accurately and effectively was eligible. Diehr, 
    450 U.S. at 187
    . The same concept applies
    here – a more effective method of using the pre-existing, unpatentable Larson-Miller relationship
    may be patent eligible.
    The specification focuses on the desired physical property of the structure in elaborating
    on the claimed enhanced effect of using a first order rate relationship that relates concurrent
    13
    Dr. Glicksman acknowledges that his examples of existing processes that make use of
    concurrent application of multiple energy processes are not the same as the application of
    concurrent energy processes generally reliant upon the Larson-Miller relationship. See
    Glicksman Report at GA 17.
    15
    application of at least two different energy processes. 14 For ease of explanation, the court will
    adopt the notation “P,” as used in the specification and the Larson-Miller relationship, to denote
    the desired physical property of the structure. As the specification explains,
    [T]he first L[arson-M[iller (“L-M”)] parameter may be determined according [to]
    a first L-M relationship ([e.g.], L-M curve, etc.), wherein a desired remaining
    internal stress value is selected along the Y axis of the first L-M curve, and the
    corresponding parameter (“P”) value is ascertained along the X axis (𝑃1 ). A
    second L-M parameter is determined for the desired physical property value
    according to a second L-M relationship ([e.g.], a second L-M curve) by locating
    locating the corresponding second parameter value ([e.g.], 𝑃2 ) along the X axis.
    the desired internal stress value on the Y axis of the second L-M curve, and
    A third L-M parameter ([e.g.], 𝑃3 ) may optionally be determined according to the
    first and second L-M parameters (𝑃1 and 𝑃2 ), such as by subtraction ([e.g.],
    𝑃3 = 𝑃1 − 𝑃2 ). An operational setting and a time value are then selected
    according to [𝑃3 ] . . . .
    ’722 patent, col. 3, lines 21-36. Determining 𝑃3 and using it to choose an operational or
    patent, col. 7, lines 24-25; col. 3, lines 32-34, but 𝑃3 is the key product of concurrent
    time setting is often described as an “optional” step in the specification, see, e.g., ’722
    application of two energy processes. It reflects a single, combined first order rate
    relationship that can more efficiently transform the physical properties of a structure to
    make use of 𝑃3 , e.g., Claim 11, constitute or state more than mere limiting steps or
    relieve stress or defects. See ’722 patent, col. 7, lines 28-36. Consequently, claims that
    conventional post-solution activity. 15
    14
    Accenture prohibits reading limitations from a specification into an otherwise ineligible
    claim in order to render it eligible. Accenture, 728 F.3d at 1345 (“[T]he level of detail in the
    specification does not transform a claim reciting only an abstract concept into a patent-eligible
    system or method.”). In considering the specifications in this case, the court is using them to
    assist in understanding the language of the claims themselves, not to ascribe limitations on the
    claims that are not present in the text.
    15
    Reduced to very simple terms, conceptually, both experts postulated that “the activation
    energy barrier for [desired physical changes] can be decreased from that existing under a thermal
    fill (temperature) alone,” with the consequence “that the process rate is enhanced.” Glicksman
    Report at GA 12; see Cahill Report at 4 (referring to a modification in the energy required
    through the addition of a second form of energy). Having said as much, Dr. Glicksman refers to
    this result as one obtainable “per the predictions provided by the Boltzman-Arrhenius
    relationship,” Glicksman Report at GA 12, and as “a direct[] and straight forward mathematical
    extension of the classical Larson-Miller time-temperature equivalency method for correlating
    stress-rupture failures,” id. at GA 16. In Dr. Glicksman’s view, the “results . . . should appear
    obvious to someone reasonably skilled in metallurgical kinetics and the prior analysis and
    publication of Larson and Miller.” Id. Dr. Cahill on the other hand, opines “that the inventor of
    the ’722 patent has discovered the fact that accelerated kinetics produced by an oscillatory strain
    16
    The specification uses the word “acceleration” with reference “to chang[ing] a physical
    property of a structure in less time and using less energy than was possible using previous
    methods.” ’722 patent, col. 7, lines 32-36. During claim construction the court explicitly
    rejected the inclusion of “acceleration” into construed Term 7 of the patent. Hitkansut II, 114
    Fed. Cl. at 421. Construed Term 7, which appears in Claims 1 and 7, states, “At least one of the
    operational setting and a time value being selected according to a first order rate relationship for
    the first energy process, according to a first order rate relationship for a second energy process,
    and according to a desired physical property value.” Id. The court rejected the plaintiff’s
    proposed definition, which included the goal of “temporal acceleration in the desired physical
    property value” because it appeared nowhere in the term or in the claims. Id. 16 Efficiency,
    however, need not be a factor of time (acceleration), but could also be a decrease in total energy
    expended. See Glicksman Report at GA 12 (noting that the Larson-Miller relationship and the
    Boltzmann-Arrhenius rate relationship rely on the “fundamental notion of time-temperature
    equivalence”).
    Claim 1 is similar to Claim 11 in that it relies on use of a combined first order
    relationship relating concurrent application of two energy processes to a desired physical
    property value, as compared to Claims 7 and 14, which both direct calculation of time values and
    operational settings by using two separate Larson-Miller relationships. Claim 1 describes:
    A method of changing a physical property of a structure, comprising:
    [1] providing a first energy to a structure by performing a first
    energy process according to an operational setting, at least one of the
    operational setting and a time value being selected according to a first
    order rate relationship for the first energy process, according to a first
    order rate relationship for a second energy process, and according to a
    desired physical property value; and
    [2] providing a second energy to the structure by performing the
    second energy process;
    [3] wherein the first and second energy processes are performed
    concurrently for at least the time value;
    [4] wherein the first order rate relationship for the first energy
    process relates application of the first energy to the structure and a
    physical property of the structure;
    [5] wherein the first order rate relationship for the second energy
    process relates application of the second energy to the structure and the
    physical property;
    can be described by a modification of the Larson[-]Miller relationship,” and that discovery “is
    not a trivial extension of a known law of nature” but instead “is both non-obvious and highly
    useful.” Cahill Report at 4.
    16
    The court ultimately defined construed Term 7 to mean “choosing a set point or time
    value for a first order rate relationship for the first energy process and for a first order rate
    relationship for the second energy process, to achieve a desired physical property value.”
    Hitkansut II, 114 Fed. Cl. at 421.
    17
    [6] wherein the first and second energies are different;
    [7] wherein the total energy provided to the structure by the first
    and second energy processes is above an activation energy for the material
    of the structure;
    [8] wherein the first energy is thermal and wherein the second
    energy is oscillatory;
    [9] wherein the operational setting is a temperature setting,
    wherein one of the temperature setting and the time value is selected
    according to the first order rate relationship for the first energy process,
    according to the first order rate relationship for the second energy
    process, according to the desired physical property value, and according
    to the other one of the temperature setting and the time value; and
    [10] wherein the first order rate relationship for the first energy
    process is a first Larson[-]Miller relationship that relates application of
    thermal energy to the structure and the physical property, and wherein the
    first order rate relationship for the second energy process is a second
    Larson[-]Miller relationship that relates application of oscillatory energy
    to the structure and the physical property.
    “according to” phrases can reasonably be read to limit the method to processes that use a 𝑃3
    ’722 patent, Claim 1 (emphasis added). In this claim, for clause 9, the third and fourth
    value to calculate the appropriate operational setting or time value. These phrases — “according
    to a desired physical property value” and “according to the other one of the temperature setting
    and the time value” — provide the reference to combination that is lacking in Claim 7.
    Additionally, Claim 1 is limited to the application of thermal and oscillatory energies to the
    structure. In this way, it is more limited than Claim 11 and less prone to be overly preclusive of
    known and unknown uses of applying concurrent energies in accord with a combined Larson-
    Miller relationship.
    C. Synopsis
    Claims 1 and 11 are directed to the transformation of a structure using a new method that
    relies on an inventive manipulation of the phenomena represented by the Larson-Miller
    relationship. They describe a method of concurrent application of two energy processes to solid
    manufactured parts to obtain a desired physical property of those structures with more efficiency
    and indicate that a modified Larson-Miller relationship can be used to characterize that process.
    The court finds that Claims 1 and 11 do more than recite an equation and direct the application of
    conventional, known activity. Nonetheless, open questions remain regarding whether Claims 1
    and 11 satisfy additional requirements under Section 101 and other sections. 17 Claims 7 and 14,
    17
    In particular, the court acknowledges the government’s contentions that the claims are
    written too broadly and risk preempting an array of processes that rely on the Larson-Miller
    relationship. See Def.’s Mot. at 30; Def.’s Reply at 14-16, 20; see also Research Corp. Techs.,
    Inc. v. Microsoft Corp., 
    627 F.3d 859
    , 869 (Fed. Cir. 2010) (“[T]his court notes that an invention
    which is not so manifestly abstract as to override the statutory language of [S]ection 101 may
    nonetheless lack sufficient concrete disclosure to warrant a patent. . . . [A] patent that presents a
    18
    however, do not sufficiently distinguish the claimed methods from a straightforward, and
    unpatentable, calculation and application of the known Larson-Miller relationship.
    CONCLUSION
    For the reasons stated, the government’s motion for summary judgment is GRANTED IN
    PART AND DENIED IN PART. Specifically, the government’s motion is granted as to
    independent Claims 7 and 14, and by extension, to dependent Claim 8 as well, but denied as to
    independent Claims 1 and 11, as well as dependent Claims 2 and 6. The plaintiffs’ cross-motion
    for summary judgment is DENIED.
    It is so ORDERED.
    s/ Charles F. Lettow
    Charles F. Lettow
    Judge
    process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite
    because the invention would ‘not provide sufficient particularity and clarity to inform skilled
    artisans of the bounds of the claim.’” (quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
    
    537 F.3d 1357
    , 1371 (Fed. Cir. 2008))).
    The Supreme Court is scheduled to hear oral argument in Nautilis, Inc. v. Biosig
    Instruments, Inc. on April 28, 2014, regarding issues that include interpretation of 
    35 U.S.C. § 112
    , related to indefiniteness, and 
    35 U.S.C. § 282
    (a), related to presumed validity of an issued
    patent. See Pet. for Writ of Certiorari, Nautilis, Inc. v. Biosig Instruments, Inc., No. 13-369.
    19