Petition for Writ of Certiorari — Audio Evolution Diagnostics, Inc., Petitioner v. United States, et al.

Supreme Court briefJan 27, 2025

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No. 24-____

IN THE

SUPREME COURT OF THE UNITED STATES

AUDIO EVOLUTION DIAGNOSTICS, INC.,

Petitioner

UNITED STATES OF AMERICA &

GLOBALMEDIA GROUP, LLC,

Respondents

ON PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI OF

AUDIO EVOLUTION DIAGNOSTICS, INC.

PETER J. CORCORAN III

Counsel of Record

CORCORAN IP LAW PLLC

4142 McKnight Road

Texarkana, Texas 75503

903.701.2481

peter@corcoranip.com

JOEL B. ROTHMAN

SRIPLAW, P.A.

21301 Powerline Road

Suite 100

Boca Raton, Florida 33433

Counsel for Petitioner

January 27, 2025

QUESTIONS PRESENTED

Applying this Court’s rulings in Alice and Mayo,

the U.S. Court of Federal Claims invalidated plaintiff’s patents—not for a business method or computer

program—but for a new and useful machine applicable in the telemedicine industry.

The Court of Federal Claims invalidated all of Audio Evolution Diagnostics, Inc. (“AED”)’s patent

claims as abstract ideas by conflating novelty and obviousness under 35 U.S.C. §§ 102 and 103 with patent

eligibility under § 101. The government—plaintiff’s

opponent here—has urged this Court at least twice to

revisit Alice and Mayo to prevent such overreach.

On appeal, the Federal Circuit affirmed the same

way that it has resolved over one-third of all patent

appeals that came before it in the last two decades—

with one word: “affirmed” and a cite to Federal Circuit

Rule 36.

The questions presented are:

1. Whether this Court should clarify its Alice and

Mayo rulings at steps one and two by focusing on the

language of 35 U.S.C. § 101 itself and differentiate patent-eligibility determinations under § 101 from factbased well-understood, routine, and conventional

questions of novelty, obviousness, and enablement under §§ 102, 103, and 112.

2. Whether this Court should find that the Federal Circuit is abandoning its role of articulating

patent law precedent and bringing uniformity to patent law with its overuse of Federal Circuit Rule 36 to

summarily affirm decisions of lower tribunals involving unsettled and complex issues of patent law.

iii

RULE 29.6 STATEMENT

Audio Evolution Diagnostics, Inc., has no parent

company or publicly held company with a 10% or

greater ownership interest in it.

RELATED PROCEEDINGS

The related proceedings, opinions, and orders below are:

1. Audio Evolution Diagnostics, Inc. v. United

States & GlobalMedia Group, LLC, No. 2023-1096

(Fed. Cir. May 14, 2024) (judgment summarily affirming CFC under Federal Circuit Rule 36) (see

Appendix A);

2. Audio Evolution Diagnostics, Inc. v. United

States & GlobalMedia Group, LLC, No. 1:20-cv01384-PEC (Ct. Cl. Sept. 21, 2022) (order denying motion to vacate judgment and alter or amend judgment)

(see Appendix B);

3. Audio Evolution Diagnostics, Inc. v. United

States & GlobalMedia Group, LLC, No. 1:20-cv01384-PEC (Ct. Cl. July 1, 2022) (order granting motion to dismiss) (see Appendix C); and

4. Audio Evolution Diagnostics, Inc. v. United

States & GlobalMedia Group, LLC, No. 2023-1096

(Fed. Cir. Aug. 28, 2024) (order denying petition for

panel rehearing and rehearing en banc) (see Appendix D).

TABLE OF CONTENTS

QUESTIONS PRESENTED ........................................ i

RULE 29.6 STATEMENT ........................................ iii

RELATED PROCEEDINGS ...................................... iv

TABLE OF APPENDICES.…...………………………vii

TABLE OF CITED AUTHORITIES........................viii

OPINIONS BELOW.................................................... 1

JURISDICTION .......................................................... 1

STATUTE INVOLVED ............................................... 1

STATEMENT OF THE CASE .................................... 2

The asserted patents ..................................... 2

II.

Overview of the CFC Case ............................ 3

III. The Patent Claims in the CFC ...................... 5

IV. The CFC’s misapplication of Alice/Mayo,

step two, finding that individual

elements of the claims were “wellunderstood, routine, or conventional”

under § 101 versus §§ 102 and 103. ............ 10

The CFC’s abstract idea statement does

not focus on the claims as a whole. ............. 11

REASONS FOR GRANTING THE PETITION ....... 13

The correct application of this Court’s

rulings in Alice and Mayo is a significant

issue that deserves the Court's attention… 14

A. The Solicitor General, courts, USPTO, and

Congress have each requested that this

Court provide further guidance. ............... 14

1. The Solicitor General........................... 15

2. The courts ............................................ 16

3. The USPTO .......................................... 17

4. Congress ............................................... 18

B. Application of Alice and Mayo has

deviated from the intended purpose of

eliminating bad patents and needs

reevaluation. ............................................. 18

1. Eligibility versus patentability ........... 19

2. Factual issues versus legal issues ...... 25

3. Arbitrary outcomes .............................. 26

C. The Federal Circuit's rulings are

hindering innovation. ............................... 28

II.

This case effectively addresses the question

presented and is ripe for review.................. 31

III. The Federal Circuit’s application of Rule 36

to cases like this runs afoul of normative

rules of decision and deserves this Court's

attention. ...................................................... 31

CONCLUSION .......................................................... 40

vii

TABLE OF APPENDICES

APPENDIX A — JUDGMENT OF THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT, FILED

MAY 14, 2024 . . . . . . . . . . . . . . . . . . . . . . . . . . . .1a

APPENDIX B — OPINION OF THE UNITED

STATES COURT OF FEDERAL CLAIMS,

FILED SEPTEMBER 21, 2022 . . . . . . . . . . . . . . .3a

APPENDIX C — OPINION OF THE UNITED

STATES COURT OF FEDERAL CLAIMS,

FILED JULY 1, 2022 . . . . . . . . . . . . . . . . . . . . . 14a

APPENDIX D — ORDER OF THE UNITED

STATES COURT OF APPEALS FOR THE

FEDERAL CIRCUIT, FILED

AUGUST 28, 2024 . . . . . . . . . . . . . . . . . . . . . . . .49a

viii

TABLE OF CITED AUTHORITIES

Cases

Alcon Rsch. Ltd. v. Barr Lab’ys, Inc.,

745 F.3d 1180 (Fed. Cir. 2014) ............................ 26

Alice Corp. v. CLS Bank Int’l,

573 U.S. 208 (2014)........................................ 13, 27

Am. Axle & Mfg. v. Neapco Holdings LLC,

966 F.3d 1347 (Fed. Cir. 2020) .......... 11, 25, 28, 29

Am. Axle & Mfg. v. Neapco Holdings LLC,

967 F.3d 1285 (Fed. Cir. 2020) .......... 22, 24, 25, 26

Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,

977 F.3d 1379 (Fed. Cir. 2020) ............................ 16

Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,

841 F.3d 1288 (Fed. Cir. 2016) ...................... 21, 22

Amgen Inc. v. Sanofi,

598 U.S. 594 (2023).............................................. 25

Ancora Techs., Inc. v. HTC Am., Inc.,

908 F.3d 1343 (Fed. Cir. 2018) ............................ 23

Ass’n for Molecular Pathology v. Myriad Genetics,

Inc., 569 U.S. 576 (2013) ..................................... 28

Athena Diagnostics, Inc. v. Mayo Collaborative

Servs., LLC, 915 F.3d 743 (Fed. Cir. 2019)......... 21

Bascom Glob. Internet Servs., Inc. v. AT&T Mobility

LLC, 827 F.3d 1341 (Fed. Cir. 2016)................... 22

Bellamy v. Bradley,

729 F.2d 416 (6th Cir. 1984) ............................... 34

Berkheimer v. HP Inc.,

890 F.3d 1369 (Fed. Cir. 2018) ...................... 22, 26

Bilski v. Kappos,

561 U.S. 593 (2010).......................................... 9, 28

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141 (1989).............................................. 28

Bush v. Palm Beach County Canvassing Bd.,

531 U.S. 70 (2000)................................................ 32

Campbell v. Hewitt, Coleman & Assocs., Inc.,

21 F.3d 52 (4th Cir. 1994) ................................... 33

Cardinal Chem. Co. v. Morton Int'l,

508 U.S. 83 (1993)................................................ 38

CareDx Inc. v. Natera, Inc.,

144 S.Ct. 248 (2023)............................................. 15

CareDx, Inc. v. Natera, Inc.,

40 F.4th 1371 (Fed. Cir. 2022) ...................... 21, 23

CareDx, Inc. v. Natera, Inc.,

563 F. Supp. 3d 329 (D. Del. 2021) ..................... 17

Carter v. Stanton,

405 U.S. 669 (1972).............................................. 32

Chamberlain Grp. v. Techtronic Indus. Co.,

935 F.3d 1341 (Fed. Cir. 2019) ............................ 26

ChargePoint, Inc. v. SemaConnect, Inc.,

920 F.3d 759 (Fed. Cir. 2019) .............................. 26

Cleveland Clinic Found. v. True Health Diagnostics

LLC, 859 F.3d 1352 (Fed. Cir. 2017)................... 21

CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC,

15 F.4th 1091 (Fed. Cir. 2021) ............................ 22

Couveau v. Am. Airlines, Inc.,

218 F.3d 1078 (9th Cir. 2000).............................. 34

Data Engine Techs. LLC v. Google LLC,

906 F.3d 999 (Fed. Cir. 2018) .............................. 22

Dennison Mfg. Co. v. Panduit Corp.,

475 U.S. 809 (1986).............................................. 32

Diamond v. Diehr,

450 U.S. 175 (1981).............................................. 10

Elec. Power Grp., LLC v. Alstom S.A.,

830 F.3d 1350 (Fed. Cir. 2016) ............................ 21

Exergen Corp. v. Kaz USA, Inc.,

725 F. App’x 959 (Fed. Cir. 2018)........................ 22

Ficep Corp. v. Peddinghaus Corp.,

2023 WL 5346043 (Fed. Cir. Aug. 21) ................. 24

Gillis v. Hoechst Celanese Corp.,

4 F.3d 1137 (3d Cir. 1993) ................................... 33

Graham v. John Deere Co. of Kansas City,

383 U.S. 1 (1966).................................................. 23

Health Discovery Corp. v. Intel Corp.,

577 F. Supp. 3d 570 (W.D. Tex. 2021) ................ 17

In re Killian,

45 F.4th 1373 (Fed. Cir. 2022) ...................... 27, 28

In re Rudy,

956 F.3d 1379 (Fed. Cir. 2020) ............................ 26

Interactive Wearables, LLC v. Polar Electro Oy,

143 S.Ct. 2482 (2023)........................................... 15

Internet Pats. Corp. v. Active Network, Inc.,

790 F.3d 1343 (Fed. Cir. 2015) ................ 20, 21, 29

Interval Licensing LLC v. AOL, Inc.,

896 F.3d 1335 (Fed. Cir. 2018) ............................ 21

KSR Int’l Co. v. Teleflex Inc.,

550 U.S. 398 (2007)........................................ 23, 24

Mayo Collaborative Servs. v. Prometheus Lab’ys,

566 U.S. 66 (2012)................................................ 13

McIncrow v. Harris Cty.,

878 F.2d 835 (5th Cir. 1989) ............................... 33

Mirror Imaging, LLC v. PNC Bank, N.A.,

2022 WL 229363 (W.D. Tex. Jan. 26) ................. 17

Parker v. Dugger,

498 U. S. 308 (1991)............................................. 39

Parker v. Flook,

437 U.S. 584 (1978).............................................. 12

xii

Peck v. Bridgeport Machines, Inc.,

237 F.3d 614 (6th Cir. 2001) ............................... 34

Perfect Web Techs., Inc. v. InfoUSA, Inc.,

587 F.3d 1324 (Fed. Cir. 2009) ............................ 23

Planned Parenthood of Se. Pa. v. Casey,

505 U.S. 833 (1992).............................................. 32

PPS Data v. Jack Henry & Assocs.,

404 F. Supp. 3d 1021 (E.D. Tex. 2019) ............... 16

Rates Tech., Inc. v. Mediatrix Telecom, Inc.,

688 F.3d 742 (Fed. Cir. 2012) .............................. 39

Realtime Data LLC v. Array Networks Inc.,

2023 WL 4924814 (Fed. Cir. Aug. 2) ............. 25, 29

Realtime Data LLC v. Array Networks Inc.,

537 F. Supp. 3d 591 (D. Del. 2021) ..................... 27

Realtime Data LLC v. Reduxio Sys.,

831 F. App’x 492 (Fed. Cir. 2020)........................ 27

Return Mail, Inc. v. United States Postal Serv.,

868 F.3d 1350 (Fed. Cir. 2017) ...................... 21, 28

Smart Sys. Innovations, LLC v. Chicago Transit

Auth., 873 F.3d 1364 (Fed. Cir. 2017) ................. 22

Taylor v. McKeithen,

407 U.S. 191 (1972).............................................. 37

TecSec, Inc. v. IBM Corp.,

731 F.3d 1336 (Fed. Cir. 2013) ............................ 40

xiii

Thales Visionix Inc. v. United States,

850 F.3d 1343 (Fed. Cir. 2017) ............................ 21

Townes v. Alabama,

586 U.S. 977 (2018).............................................. 39

Trading Techs. Int’l, Inc. v. CQG, INC.,

675 F. App’x 1001 (Fed. Cir. 2017)................ 19, 21

Trading Techs. Int’l, Inc. v. IBG LLC,

921 F.3d 1378 (Fed. Cir. 2019) ............................ 22

Tropp v. Travel Sentry, Inc.,

143 S.Ct. 2483 (2023)........................................... 15

Universal Secure Registry LLC v. Apple Inc.,

10 F.4th 1342 (Fed. Cir. 2021) ............................ 23

Van Bourg, Allen, Weinberg & Roger v. NLRB,

656 F.2d 1356 (9th Cir. 1981).............................. 33

Visual Memory LLC v. NVIDIA Corp.,

867 F.3d 1253 (Fed. Cir. 2017) ............................ 25

WhitServe LLC v. Dropbox, Inc.,

854 F. App’x 367 (Fed. Cir. 2021)........................ 24

Yu v. Apple Inc.,

1 F.4th 1040 (Fed. Cir. 2021) ............ 20, 21, 26, 29

Statutes

35 U.S.C. § 101 ........................ 1, 3–5, 8–11, 13–31, 38

35 U.S.C. § 102 .............................. 8–11, 16, 19–21, 31

35 U.S.C. § 103 .................. 8–11, 16, 19–21, 23–24, 31

xiv

35 U.S.C. § 112 .................................... 9–11, 19, 24–26

35 U.S.C. § 144 .......................................................... 39

The Federal Courts Improvement Act of 1982,

Publ. L. No. 97-164, 96 Stat. 25 .......................... 37

Other Authorities

Charles R. Macedo et al., Justice is Not Silent: The

Case Against One-Word Affirmances in the

Federal Circuit (Sept. 22, 2024),

https://patentlyo.com/patent/2024/09/appellatedecision-reasoning.html ...................................... 34

Falati, To Promote Innovation, Congress Should

Abolish the Supreme Court Created Exceptions to

35 U.S. Code §101,

28 Tex. Intell. Prop. L.J. 1 (2019) ....................... 30

Fiacco, Testimony Before the S. Subcomm. on Intell.

Prop. (June 5, 2019) ............................................. 30

Iancu, The Patent Eligibility Restoration Act:

Hearings on S. 2140 Before the Subcomm. on

Intell. Property,

118th Cong. 4 (Jan. 23, 2024).............................. 29

Oldfather, C., Writing, Cognition, and the Nature of

the Judicial Function,

96 Geo. L.J. 1283 (2008) ...................................... 36

Patent Eligible Subject Matter: Public Views on the

Current Jurisprudence in the United States (June

2022), perma.cc/5558-F4CV ................................ 18

Rantanen, J., Missing Decisions and the United

States Court of Appeals for the Federal Circuit,

170 U. Penn. L. Rev. Online 73 (2022) ............... 34

Tillis, Coons Introduce Landmark Legislation to

Restore American Innovation, Press Release (June

22, 2023), perma.cc/JLK2-VX4A ................... 18, 31

Rules

Fed. Cir. R. 36 ........................................................... 35

Treatises

Antonin Scalia, A Matter of Interpretation:

Federal Courts and the Law (1997) .................... 32

Benjamin N. Cardozo, Jurisdiction of the Court of

Appeals (2d ed. 1909) ........................................... 32

The Federalist No. 78 (Alexander Hamilton) ........... 36

Regulations

2019 Revised Patent Subject Matter Eligibility

Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ........... 18

Constitutional Provisions

U.S. Const. amend. XIV ............................................ 39

U.S. Const. art. I, § 8, cl. 8……………………………..28

OPINIONS BELOW

The Federal Circuit’s Rule 36 judgment is reported

at 2024 WL 2143376 and is reproduced at Appendix

(“App.”) 1a–2a. The Court of Federal Claims’ orders

are reported at 162 Fed. Cl. 73 and 160 Fed. Cl. 513,

respectively, and are reproduced at App.3a–48a.

JURISDICTION

The Federal Circuit’s judgment was entered on

May 14, 2024, and its order denying panel rehearing

and rehearing en banc was entered on August 28,

2024. The Chief Justice on November 19, 2024, in Application No. 24A497 granted AED a sixty-day

extension to file its petition by Saturday, January 25,

2025. This Court has jurisdiction under 28 U.S.C.

§ 1254(1).

STATUTE INVOLVED

35 U.S.C. § 101 provides: “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.”

STATEMENT OF THE CASE

The asserted patents

U.S. Patent Nos. 8,920,343 (“the ’343 patent”) and

8,870,791 (“the ’791 patent”), assigned to AED and issued to Michael E. Sabatino, M.D., A.B.P.N., describe

a new and useful machine with a claimed specific ordered combination of physical electronic components

that capture, transform, analyze, display with a customizable display, and transmit physiologic sounds

for diagnosing medical issues with the human body.

The inventions was never before claimed in such combination in the prior art anywhere in the world at the

time of filing. The machine has transducers that are

placed on the body to detect organ sounds as analog

signals. C.A. App. 83–84 (’343 patent 3:33–42, 3:56–

4:4, 6:19–32, FIG. 1); C.A. App. 143–144 (’791 patent

4:19–27, 4:40–55, 6:15–28, FIG. 1). An analog-to-digital converter digitizes the signals for processing and

analysis. C.A. App. 85 (’343 patent 8:21–33); C.A. App.

145 (’791 patent 8:18–29). A display features icons

that show customizable operations tied to specific system functions. C.A. App. 83, C.A. App. 86 (’343 patent

3:19–32, 4:51–5:3, 9:1–17); C.A. App. 143–145 (’791

patent 4:6–18, 5:34–53, 8:64–9:13). The digital organ

sounds can then be shared over a network for further

analysis and display by other medical professionals at

remote locations.

The Asserted Patents have a priority date of March

23, 2006, from a provisional application. C.A. App. 35,

C.A. App. 96. The non-provisional application for the

’343 patent was filed on November 20, 2006, and the

patent issued on December 30, 2014. C.A. App. 35.

The non-provisional application for the '791 patent, a

continuation of the ’343 application, was filed on

March 26, 2012, and issued on October 28, 2014. C.A.

App. 96.

The USPTO took eight and a half years to examine

the Asserted Patents. They were issued despite hundreds of prior art references. Throughout this period,

the USPTO never rejected any claims based on Alice/Mayo or 35 U.S.C. § 101 patent eligibility

requirements. The Asserted Patents were previously

litigated in the District of Delaware (Case No. 1:16-cv1280-LPS), where their patent eligibility was never

questioned.

II.

Overview of the CFC Case

AED filed a patent infringement complaint against

the government under 28 U.S.C. § 1498(a) on October

13, 2020, claiming unauthorized use of telemedicine

products sold to it by GlobalMedia Group, LLC (“GlobalMed”). C.A. App. 28 (Case No. 1:20-cv-01384-PEC).

On December 14, 2020, the government moved to dismiss the complaint. Id. GlobalMed joined as a thirdparty defendant on February 16, 2021. C.A. App. 30.

On February 24, 2021, AED filed its first amended

complaint. C.A. App. 30. The government renewed its

motion to dismiss on March 24, 2021, which GlobalMed joined. C.A. App. 30. On October 5, 2021, the

court denied the government’s motion to dismiss as

moot and ordered AED to file a second amended complaint (“SAC”) and include certain jurisdictional facts

that the court requested in its order. C.A. App. 31.

AED filed its SAC on November 5, 2021. C.A. App.

31. The government again renewed its motion to dismiss on December 3, 2021, which GlobalMed again

joined. C.A. App. 32.

On July 1, 2022, the court granted the government’s motion to dismiss under Rule 12(b)(6), but not

12(b)(1), and entered judgment. App.48a. The court

ruled that it had subject matter jurisdiction over the

allegations in the SAC under Rule 12(b)(1). App.48a.

It found the SAC failed to state a claim for relief under

Rule 12(b)(6) because the Asserted Patents were not

entitled to patent protection under 35 U.S.C. § 101.

App.38a–48a. Instead of limiting its invalidity determination to certain asserted claims, the Claims Court

applied its invalidity ruling to the entirety of the patents without limitation to any specific claims.

On August 3, 2022, AED moved to vacate and

amend the judgment, and to file a third amended complaint (“TAC”). C.A. App. 33. The motion to vacate

requested reconsideration based on previously unavailable evidence—the USPTO’s recent issuance of

AED’s U.S. Patent No. 11,357,471 (“the ’471 patent”)

on June 22, 2022. The ’471 patent was highly relevant

since it recited claims the USPTO had just determined

were patent eligible after dropping a § 101 rejection,

and those claims were strikingly similar to unasserted

customizable display claims of the Asserted Patents.

C.A. App. 152; C.A. App. 204.

The motion to file a TAC sought to substitute the

previously unasserted customizable display claims.

C.A. App. 634–635. The motion to amend judgment

sought to cabin the Claims Court’s ruling invalidating

the entirety of the Asserted Patents to asserted independent claim 39 of the ’343 patent and claim 17 of

the ’791 patent.

The Claims Court denied AED’s motions on September 21, 2022. App.13a. A timely appeal to the

Federal Circuit followed under 28 U.S.C. § 1295(a)(3),

which summarily affirmed the Claims Court’s rulings

without opinion or analysis under its arbitrarily overused Federal Circuit Rule 36.

III. The Patent Claims in the CFC

The Claims Court listed independent claim 39 of

the ’343 patent and independent claim 17 of the ’791

patent in its July 1, 2022, order. Claim 39 of the ’343

patent recites:

39. An apparatus for acquiring and processing physiological sounds comprising:

a plurality of sensors each respectively comprising a corresponding diaphragm,

wherein at least one sensor is configured

to be positioned on a body surface, and at

least two sensors of said plurality of sensors are configured to convert said

physiological sounds, in response to vibration

said

corresponding

diaphragms by said physiological

sounds, into a corresponding plurality of

electrical signals; and

processing unit operatively coupled to said

plurality of sensors[,] said processing

unit configured to process a plurality of

streams of digital data representative of

said corresponding plurality of electrical

signals, wherein at least a portion of said

plurality of streams of digital data are input into a parallel to serial converter to

generate a serial output.

App.18a.

Claim 17 of the ’791 patent reads:

17. An apparatus for acquiring, processing,

and transmitting physiological sounds comprising:

a plurality of sensors each respectively comprising a corresponding diaphragm, wherein at

least one corresponding diaphragm is configured to be positioned on a body surface,

and at least two sensors of said plurality of

sensors are configured to convert said physiological sounds, in response to vibration of

said corresponding diaphragms by said

physiological sounds, into a corresponding

plurality of electrical signals;

a corresponding plurality of analogue to digital

converters each operatively coupled to a corresponding one sensor of said plurality of

sensors, said analogue to digital converters

configured to convert at least a portion of

said plurality of electrical signals into a plurality of streams of digital data;

a processing unit operatively coupled to the plurality of analogue to digital converters, said

processing unit configured to process said

plurality of streams of digital data, wherein

at least a portion of said plurality of streams

of digital data are input in parallel into a

parallel to serial converter to generate a serial output; and

a wireless network device configured for wireless transmission of at least a portion of said

serial output in a first direction away from

said processing unit, and said wireless network device is further configured for

reception of an input that is wirelessly

transmitted in a second direction towards

said processing unit.

App.18a–20a.

The Claims Court ruled at Alice/Mayo step one

that the patent is “directed at the abstract idea of ‘collecting, analyzing, manipulating, and displaying

data,’ . . . and ‘filtering patient [physical] signals to

increase accuracy,” App.42a; App.13a, despite its clear

finding that the patent discloses and claims “a physical monitoring and data collection device that collects

and filters human physiological data and then displays it for a clinician to review.” App.41a (emphasis

added).1 According to the court, a “physical device” is

an abstract idea when it contains “conventional hardware and software.” App.42a. The court found that it

“cannot discern[] any factual dispute that prevents [it]

from making this determination,” id., when the question of whether the invention contains conventional

hardware and software is a disputed fact question of

novelty and obviousness under §§ 102 and 103, not §

101.

________________________________________

1 Claims 39 and 17 expressly do not recite “manipulating” and

“displaying data” or “filtering patient [physical] signals” as explained later in this brief. See infra Part V.

Any of the Claims Court’s reliance on the specifications for “admissions” of the claim elements as wellunderstood, routine, or conventional should be disregarded; the specifications are written to meet 35

U.S.C. § 112 written description requirements.

Whether claim components are well-understood, routine, or conventional as described in the specifications

remain factual questions.

The Claims Court next found under Alice/Mayo

step two that the patents lack an inventive concept

because the claims recite “conventional and well-understood” elements—the same rationale it used for

step one. App.43a; App.47a. Whether the claims recite

conventional and well-understood elements is a disputed fact question of novelty and obviousness under

§§ 102 and 103, not § 101. The court went out of its

way to ignore AED’s well-pled facts of an unconventional arrangement of specific components as an

ordered combination into a machine, apparatus, or

system that transforms physiologic sound signals

from parallel to serial, serial to parallel, analog to digital, and digital to analog formats consistent with this

Court’s “inventive concept” precedent. See, e.g., Bilski

v. Kappos, 561 U.S. 593, 604 (2010) (“The machine-ortransformation test is a ‘useful and important clue’ for

determining patent eligibility [].”).

IV. The CFC’s misapplication of Alice/Mayo,

step two, finding that individual elements

of the claims were “well-understood, routine, or conventional” under § 101 versus

§§ 102 and 103.

Against Diehr’s explicit distinction between §§ 101

and 102 (and thus §§ 103 and 112), the Claims Court

held that AED’s new and useful diagnostic machine

patents do not contain an inventive concept because

the claimed components were “well-understood” and

“conventional” and perform only their basic functions.

App.43a; App.47a. This Court in Diehr instructed:

It has been urged that novelty is an appropriate

consideration under § 101. Presumably, this

argument results from the language in § 101 referring to any “new and useful” process,

machine, etc. Section 101, however, is a general

statement of the type of subject matter that is

eligible for patent protection “subject to the conditions and requirements of this title.” Specific

conditions for patentability follow and § 102 covers in detail the conditions relating to novelty.

The question therefore of whether a particular

invention is novel is “wholly apart from

whether the invention falls into a category of

statutory subject matter.”

Diamond v. Diehr, 450 U.S. 175, 189–90 (1981) (citations omitted).

“A valid patent must meet the ‘conditions and requirements’ of the patent statute; eligibility under

Section 101 is not the same as patentability under the

substantive statutory provisions of novelty (§ 102),

non-obviousness (§ 103), and description and enablement (§ 112).” Am. Axle & Mfg. v. Neapco Holdings

LLC, 966 F.3d 1347, 1357 (Fed. Cir. 2020) (Newman,

J. dissenting) (Moore, O’Malley, Reyna, Stoll, JJ., joining).

A new and useful diagnostic machine, constructed

from real-world electronic components, is not abstract

simply because it includes conventional parts. For example, a radio comprises conventional components,

but it is not an abstract idea; it isolates, amplifies, processes, and outputs signals as processed audio. The

radio's components are organized to achieve these

functions. Similarly, the components of AED’s diagnostic machine are arranged to serve its intended

purpose. The assessment of whether the claims involve conventional or well-understood components

and meet the substantive patentability requirements

under §§ 102, 103, and 112 is a separate inquiry from

the § 101 evaluation.

The CFC’s abstract idea statement does not

focus on the claims as a whole.

The Claims Court’s finding that the patents are

“directed at the abstract idea of ‘collecting, analyzing,

manipulating, and displaying data,’ . . . and ‘filtering

patient [physical] signals to increase accuracy” did not

consider the claims as a whole as this Court requires.

Diehr, 450 U.S. at 177; Parker v. Flook, 437 U.S. 584,

594 (1978). Claims 39 and 17 do not recite “manipulating” and “displaying data” or “filtering patient

[physical] signals.” The Claims Court erred by invalidating these claims under an alleged abstract idea

that is not actually recited anywhere in claims.

Claims 1 and 29 of the ’343 patent and claims 1

and 8 of the ’791 patent are directed to much more

than simply “displaying data.” The claim language

states that “each icon” corresponds to at least one “operation that the processing unit is configured to

perform,” which has absolutely nothing to do with performing the mere function of “displaying data.” C.A.

App. 87 (11:12–28); C.A. App. 88 (14:49–64); C.A. App.

147 (11:29–46); C.A. App. 147 (12:39–54).

The Asserted Patents specify that “at least one operation” can be “modified” by a “user through

interaction with at least one icon displayed.” The “display device” provides a specific interface that enables

a user to improve the functioning of the machine by

modifying its operations. It is not a “generic display

device” that does nothing more than “display data” as

the government argues. Determinations like the

Claims Court’s here, which was at the highest level of

abstraction untethered from the language of the

claims in this case, will cause the abstract idea exception to “swallow all of patent law.” Alice Corp. v. CLS

Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo Collaborative Servs. v. Prometheus Lab’ys, 566 U.S. 66,

71 (2012)).

REASONS FOR GRANTING THE PETITION

The scope of Section 101 patent eligibility is critically important and warrants this Court's review.

Alice was decided more than a decade ago. Since then

division among decisionmakers on how to correctly apply the two-step framework has dominated the

jurisprudence. In the absence of intervention from

this Court, the core objective of patent law—fostering

innovation—has been undermined.

This case is an ideal vehicle for addressing the issue for several reasons.

First, the U.S.—AED’s adversary here—previously

urged this Court to accept the question and revisit Alice at least twice. AED agrees.

Second, the application of the “abstract idea” question to the noncomplex technology at issue is

straightforward. The factual record is well-developed

but not too lengthy because the Claims Court’s invalidity decision came on a motion to dismiss.

Third, the Federal Circuit's Rule 36 summary affirmance here calls into question whether the Federal

Circuit can properly fulfill its § 101 interpretation role

using just one word: “affirmed.”

For these reasons, this Court should grant certiorari.

The correct application of this Court’s rulings in Alice and Mayo is a significant issue

that deserves the Court's attention.

Despite deep divisions among stakeholders on

§ 101, there is unanimous agreement that this Court’s

further guidance is urgently needed. Key decisionmakers are unable to reach a consensus on applying

this Court's two-step outline. The Federal Circuit remains at an impasse over the proper scope of § 101.

Since this Court’s Alice decision, the Federal Circuit

has been unable to convene en banc on a § 101 issue,

including this case, prompting every judge on that

court to seek this Court's guidance. This deadlock has

led the Solicitor General to request that this Court

grant certiorari on the application of § 101 at least

twice in the past two years. The ongoing confusion

over § 101 has also stifled innovation. In short, the

doctrine of § 101 is in chaos and requires this Court’s

review.

A. The Solicitor General, courts, USPTO, and

Congress have each requested that this

Court provide further guidance.

The calls to reexamine § 101 have increased in volume and frequency. The United States, as the

respondent in this case, requested that this Court

grant certiorari to clarify its application of § 101. See,

e.g., U.S.-Br. in Tropp v. Travel Sentry, Inc., No. 2222, 2023 WL 2817859 (Apr. 5); U.S.-Br. in Interactive

Wearables v. Polar Electro Oy, No. 21-1281, 2023 WL

2817859 (Apr. 5) (“U.S.-IW-Br.”); U.S.-Br. in Am. Axle

& Mfg., Inc. v. Neapco Holdings LLC, No. 20-891,

2022 WL 1670811 (May 24) (“U.S.-Axle-Br.”). At least

Justice Kavanaugh has agreed that the issue deserves

review. See Tropp v. Travel Sentry, Inc., 143 S.Ct.

2483 (2023) (“Justice Kavanaugh would grant the petition”); Interactive Wearables, LLC v. Polar Electro

Oy, 143 S.Ct. 2482 (2023) (same); CareDx Inc. v.

Natera, Inc., 144 S.Ct. 248 (2023) (same).

1. The Solicitor General

The Solicitor General (“SG”) has emphasized, in response to this Court’s CVSGs, that the question

presented is cert-worthy for several reasons.

The SG noted that the Alice/Mayo framework has

“given rise to substantial uncertainty.” U.S.-AxleBr.10. The Federal Circuit “has repeatedly divided in

recent years over the content of the abstract-idea exception and the proper application of the two-step

methodology under Section 101.” U.S.-IW-Br.11; accord id. at 19 (“Recent Federal Circuit precedent

reflects significant confusion over the application of

this Court’s Section 101 decisions.”). In fact, “[o]ngoing uncertainty has induced every judge on the

Federal Circuit to request Supreme Court clarification.” U.S.-Axle-Br.20 (cleaned up).

2. The courts

While this Court typically grants certiorari to resolve circuit splits, the Federal Circuit’s internal

conflicts with § 101 are “worse than a circuit split.”

Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 977

F.3d 1379, 1382 (Fed. Cir. 2020) (Moore, C.J., concurring). That court specializes in patents, but it is

“bitterly divided” and deadlocked, having failed to go

en banc on a § 101 issue since Alice. Id. At this point,

“every judge on [the Federal Circuit has] request[ed]

Supreme Court clarification.” Id. “If a circuit split

warrants certiorari, such an irreconcilable split in the

nation’s only patent court does likewise.” Id.

The district courts are equally perplexed. As one

court declared, “[t]he only thing clear about the appropriate test for patent-eligible subject matter is that it

is unclear. Appellate courts and district courts alike

have called for intervention and clarification from the

Supreme Court or the Congress.” PPS Data v. Jack

Henry & Assocs., 404 F. Supp. 3d 1021, 1039 n.8 (E.D.

Tex. 2019). As another court decried, “the state of

§ 101 law is, to use the words of various Federal Circuit judges, fraught, incoherent, unclear, inconsistent,

and confusing, and indeterminate and often leading to

arbitrary results.” CareDx, Inc. v. Natera, Inc., 563

F. Supp. 3d 329, 337 (D. Del. 2021) (cleaned up); see

also, e.g., Mirror Imaging, LLC v. PNC Bank, N.A.,

2022 WL 229363, at *3 (W.D. Tex. Jan. 26) (Section

101 law is “‘almost impossible to apply consistently

and coherently’ in the context of abstract ideas”);

Health Discovery Corp. v. Intel Corp., 577 F. Supp. 3d

570, 576 (W.D. Tex. 2021) (“difficult to reconcile and

apply”).

3. The USPTO

The USPTO is baffled. It has “struggled to apply

[the] Section 101 precedents in a consistent manner.”

U.S.-IW-Br.21. Its struggles are the result of “lack of

clarity in judicial precedent.” U.S.-Br.16 in Hikma

Pharms. USA Inc. v. Vanda Pharms. Inc., No. 18-817,

2019 WL 6699397 (Dec. 6). The PTO attempted to

clarify the standard for patent examiners and judges

through guidance five years after Alice and Mayo. It

ultimately admitted that “[p]roperly applying the Alice/Mayo test in a consistent manner has proven to be

difficult,” that Federal Circuit precedent “has caused

uncertainty in this area of the law,” and that it is “difficult . . . for inventors, businesses, and other patent

stakeholders to reliably and predictably determine

what subject matter is patent-eligible.” 2019 Revised

Patent Subject Matter Eligibility Guidance, 84 Fed.

Reg. 50, 50 (Jan. 7, 2019). In 2022 in its report to Congress, the PTO repeated its challenges with § 101 and

the harm that this Court’s lack of guidance has

caused. See Patent Eligible Subject Matter: Public

Views on the Current Jurisprudence in the United

States, 18–41 (June 2022), perma.cc/5558-F4CV.

4. Congress

This Court’s review has bipartisan support in Congress. Senator Christopher Coons (D-DE), former

chair of the Senate Subcommittee on Intellectual

Property, has warned that the Supreme Court’s uncertainty surrounding § 101 law is harming America’s

technical competitiveness in the world: “More than a

decade after the Supreme Court waded into patent eligibility law, uncertainty remains about what areas of

innovation are eligible for patent protection. Critical

technologies . . . can be protected with patents in Europe and China, but not in the United States.” Tillis,

Coons Introduce Landmark Legislation to Restore

American Innovation, Press Release (June 22, 2023),

perma.cc/JLK2-VX4A. Senator Thom Tillis (R-NC),

current chair of the same subcommittee, concurs:

“current . . . patent eligibility jurisprudence” is erratic

and stunting innovation. Id. Nevertheless, Congress

has no plans to act.

B. Application of Alice and Mayo has deviated from the intended purpose of

eliminating bad patents and needs reevaluation.

The Federal Circuit’s precedent has diverged significantly from the Supreme Court’s rulings in Alice

and Mayo. It conflates § 101 with other patentability

criteria such as novelty, obviousness, and enablement

under §§ 102, 103, and 112. This approach transforms

essential factual inquiries into legal questions. The

Federal Circuit’s common-law adjudication method

has resulted in a tangled web of conflicting precedents, giving the impression that patent eligibility

depends on the random assignment of three-judge

panels.

1. Eligibility versus patentability

The Federal Circuit’s caselaw on § 101 merges the

threshold condition of eligible subject matter (§ 101)

with other patentability requirements such as novelty

(§ 102), nonobviousness (§ 103), and enablement

(§ 112). The Federal Circuit has adopted this blending

of distinct statutory requirements, asserting that §

101’s “threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of

patentability” found in other provisions. Trading

Techs. Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1005

(Fed. Cir. 2017). The Federal Circuit justifies importing “novelty, nonobviousness, and enablement” into §

101 as serving “the public interest in innovative advance.” Id. at 1005–06. No part of § 101 has been

spared from the Federal Circuit’s judicial activism.

E.g., Internet Pats. Corp. v. Active Network, Inc., 790

F.3d 1343, 1347 (Fed. Cir. 2015).

The SG’s Office concurs that the Federal Circuit

has inappropriately conflated patentability requirements. They note that the court often places undue

emphasis on considerations of novelty, obviousness,

and enablement when applying § 101. (U.S.-IWBr.11). This combination is problematic not only because it contradicts Alice and the statutory text, but

also because the Federal Circuit incorporates these

other patentability principles without their complementary protections against error, such as guarding

against hindsight bias and maintaining the distinction between law and fact. “[A]pplying modified

versions of other doctrines in the guise of a Section

101 analysis unmoors those doctrines from the statutory text and diminishes their analytical rigor.” U.S.IW-Br.18. These separate requirements “should not be

conflated.” U.S.-IW-Br.17.

Novelty (§ 102) and nonobviousness (§ 103) are

“not the realm of Section 101 eligibility.” Yu v. Apple

Inc., 1 F.4th 1040, 1047 (Fed. Cir. 2021) (Newman, J.,

dissenting). But the Federal Circuit has repeatedly

“conflated” them with § 101. U.S.-IW-Br.17.2 Importing these § 102 concepts into § 101 has led the Federal

________________________________________

2 E.g., Internet Pats., 790 F.3d at 1346-47 (“pragmatic analysis of

§ 101 is facilitated by considerations analogous to those of §§ 102

and 103 as applied to the particular case”); Return Mail, Inc. v.

United States Postal Serv., 868 F.3d 1350, 1370 (Fed. Cir. 2017)

(same); Trading Techs., 675 F. App’x at 1005 (similar).

Circuit to deny that Alice’s two-step framework even

has two steps; the court has “reject[ed]” the notion

that it should “draw a bright line between the two

steps.” CareDx, Inc. v. Natera, Inc., 40 F.4th 1371,

1379 (Fed. Cir. 2022) (cleaned up).3 Sometimes it “assume[s]” step one is met or “defer[s]” meaningful

analysis for step two.4 Other times it says it can “accomplis[h]” the whole analysis “without going beyond

________________________________________

3 E.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353

(Fed. Cir. 2016) (the steps are “overlapping”); Amdocs (Israel)

Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)

(same); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342

(Fed. Cir. 2018) (same); CareDx, 40 F.4th at 1379 (same); Ancora

Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1349 (Fed. Cir.

2018) (same); Yu, 1 F.4th at 1043 (patent was directed to an abstract idea because it had only “conventional” and “well-known”

elements used for their “basic functions”); Thales Visionix Inc. v.

United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (patent was

not directed to an abstract idea because of an “unconventional

choice”); Cleveland Clinic Found. v. True Health Diagnostics

LLC, 859 F.3d 1352, 1361 (Fed. Cir. 2017) (patent was directed

to ineligible subject matter because it had “no meaningful nonroutine steps”); Athena Diagnostics, Inc. v. Mayo Collaborative

Servs., LLC, 915 F.3d 743, 751 (Fed. Cir. 2019) (patent was directed to ineligible subject matter because the steps were

“conventional”).

4 E.g., CosmoKey Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th

1091, 1097 (Fed. Cir. 2021); Exergen Corp. v. Kaz USA, Inc., 725

F. App’x 959, 966 (Fed. Cir. 2018); Bascom Glob. Internet Servs.,

step one.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,

841 F.3d 1288, 1294 (Fed. Cir. 2016); see Berkheimer

v. HP Inc., 890 F.3d 1369, 1376 (Fed. Cir. 2018) (Linn,

J., concurring) (“Section 101 does not need a two-step

analysis.”); Smart Sys. Innovations, LLC v. Chicago

Transit Auth., 873 F.3d 1364, 1382 n.2 (Fed. Cir.

2017) (Linn, J., concurring in part and dissenting in

part) (similar). The Federal Circuit often conducts

only a cursory analysis at step two because of what it

concludes as a matter of law at step one.5 According to

the Solicitor General, “[c]larification” of the line between steps one and two “is especially important

because the question a court addresses at step two …

is coextensive with the ultimate question of patent-eligibility in the many cases where a court reaches that

step.” U.S.-Axle-Br.19 (cleaned up).

One key issue with the Federal Circuit’s combination of eligibility and patentability requirements is

that it introduces obstacles related to obviousness and

________________________________________

Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016);

Amdocs, 841 F.3d at 1306.

5 See, e.g., Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967

F.3d 1285, 1299 (Fed. Cir. 2020) (quickly dispensing with step

two because what remained after step one was “a restatement of

the assertion” of ineligible subject matter found at step one);

Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed.

Cir. 2019) (similar); Data Engine Techs. LLC v. Google LLC, 906

F.3d 999, 1013 (Fed. Cir. 2018) (similar).

novelty under § 101 without incorporating the safeguards of those doctrines. For instance, in an

obviousness determination the Federal Circuit considers whether a combination of steps is “logical,”

“natural,” or leads to an “expected result.” See, e.g.,

CareDx, 40 F.4th at 1380; Universal Secure Registry

LLC v. Apple Inc., 10 F.4th 1342, 1350 (Fed. Cir.

2021); Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d

1343, 1348 (Fed. Cir. 2018); Trinity Info Media, LLC

v. Co- valent, Inc., 72 F.4th 1355, 1366 (Fed. Cir.

2023). However, those terms are directly derived from

the nonobviousness precedents under § 103. See, e.g.,

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007);

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d

1324, 1329 (Fed. Cir. 2009). Moreover, the Federal

Circuit fails to apply the safeguards against “hindsight” bias when incorporating the obviousness terms

into § 101. Graham v. John Deere Co. of Kansas City,

383 U.S. 1, 36 (1966). This omission further complicates the patent eligibility analysis and undermines

the integrity of the evaluation process.

This Court emphasized that “secondary considerations” like “commercial success” should be analyzed to

guard against “the distortion caused by hindsight

bias.” KSR, 550 U.S. at 406, 421 (cleaned up). Although the Federal Circuit employs these

considerations under § 103, it does not apply them, or

any other safeguards, under § 101. See, e.g., Ficep

Corp. v. Peddinghaus Corp., 2023 WL 5346043, at *7

(Fed. Cir. Aug. 21) (“Questions of nonobviousness such

as secondary considerations . . . are irrelevant when

considering eligibility.”); WhitServe LLC v. Dropbox,

Inc., 854 F. App’x 367, 373 (Fed. Cir. 2021) (“Objective

indicia of nonobviousness are relevant in a § 103 inquiry, but not in a § 101 inquiry.”). This selective

application further complicates the patent eligibility

analysis and undermines the consistency and fairness

of the evaluation process. As the Solicitor General describes, the Federal Circuit’s approach makes

eligibility under § 101 depend on “when the patent is

filed,” versus whether the patent recites an “abstract

idea.” U.S.-IW-Br.17 (cleaned up).

Regarding § 112, the Federal Circuit has “imbued

§ 101 with a new superpower—enablement on steroids.” Am. Axle & Mfg. v. Neapco Holdings LLC, 967

F.3d 1285, 1305 (Fed. Cir. 2020) (Moore, J., dissenting). Under current caselaw, “Section 101 can do

everything 112 does and then some.” Id. at 1316

(cleaned up). By considering enablement issues under

§ 101, the Federal Circuit has manufactured a requirement that a patent’s “claims” must “teach a

skilled artisan how to [perform the invention] without

trial and error.” Id.; see, e.g., Am. Axle, 966 F.3d at

1359 (Newman, J., dissenting). According to the SG,

the Federal Circuit “blurs” § 101 and § 112 by “demanding that the claims provide a degree of detail

more appropriate to the enablement inquiry.” U.S.Axle-Br.16.

Enablement is supposed to be assessed “under 35

U.S.C. § 112, not . . . under § 101” based on a patent’s

“specification,” not its claims as in the § 101 determination. Visual Memory LLC v. NVIDIA Corp., 867

F.3d 1253, 1261 (Fed. Cir. 2017); see Amgen Inc. v.

Sanofi, 598 U.S. 594, 610–11 (2023). The Federal Circuit’s “inject[ion]” of “a heightened enablement

requirement into the § 101 analysis” is especially concerning in cases like this one, where the infringer does

not argue that there is a § 112 problem. Am. Axle, 967

F.3d at 1317 (Moore, J., dissenting). The Federal Circuit’s mixing of patentability factors with eligibility

“introduces further uncertainty.” Am. Axle, 966 F.3d

at 1363 (Stoll, J., dissenting); accord Realtime Data

LLC v. Array Networks Inc., 2023 WL 4924814, at *12

(Fed. Cir. Aug. 2) (Newman, J., dissenting).

2. Factual issues versus legal issues

The Federal Circuit’s mixed § 101 analysis also

wrongly “converts factual issues into legal ones.” Am.

Axle, 967 F.3d at 1305 (Moore, J., dissenting). The prevailing view is that step one is purely a legal question,

while step two can involve factual issues. E.g., In re

Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020); Berkheimer, 881 F.3d at 1368. That view is unsound. The

Federal Circuit frequently considers concepts like conventionality in step one as explained. However, when

conventionality is applied to other patentability requirements (§§ 102 and 103), it raises factual

questions. The Federal Circuit has also shoehorned

enablement (§ 112) into eligibility (§ 101), but enablement also relies upon “underlying factual findings.”

Alcon Rsch. Ltd. v. Barr Lab’ys, Inc., 745 F.3d 1180,

1188 (Fed. Cir. 2014). By incorporating these patentability factors into step one, the Federal Circuit’s

precedent transforms fact questions into legal ones.

3. Arbitrary outcomes

The Federal Circuit's muddled doctrine results in

arbitrary outcomes. Some of its applications of § 101

are clearly implausible. For instance, the Federal Circuit has invalidated patents for digital cameras,

garage-door openers, electric-vehicle charging stations, and driveshafts, among others. See, e.g., Yu, 1

F.4th 1040; Chamberlain Grp. v. Techtronic Indus.

Co., 935 F.3d 1341 (Fed. Cir. 2019); ChargePoint, Inc.

v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019);

Am. Axle, 967 F.3d 1285. Given the judges’ differing

opinions on § 101 and their decade-long reluctance to

address the issue en banc, outcomes will continue to

vary by three-judge panels. Although the Federal Circuit has characterized this approach as “the classic

common law methodology for creating law,” In re

Killian, 45 F.4th 1373, 1383 (Fed. Cir. 2022), no reputable common-law system would generate such

instability.

District courts face significant challenges in applying the Federal Circuit's doctrine. In a recent case, the

Federal Circuit criticized a district judge for performing a § 101 analysis that was too "cursory" to

"facilitate meaningful appellate review," and required

the judge to redo the analysis. Realtime Data LLC v.

Reduxio Sys., 831 F. App’x 492, 496–98 (Fed. Cir.

2020). The mandated reanalysis resulted in an opinion exceeding fifty pages, reaching the same

conclusion as before. The Federal Circuit then affirmed this outcome in an unpublished opinion with a

divided panel, where the judges once again disagreed

on how to apply § 101. Compare Realtime Data LLC v.

Array Networks Inc., 537 F. Supp. 3d 591 (D. Del.

2021); 556 F. Supp. 3d 424 (D. Del. 2021), with 2023

WL 4924814 (Fed. Cir. Aug. 2).

The Federal Circuit has also neglected the fundamental principle of § 101: preemption. Although

preemption is the central concern of § 101, as highlighted in Alice, 573 U.S. at 216, 223, the Federal

Circuit seldom, if ever, considers whether a patent

raises preemption issues before deeming it ineligible.

In recent years, preemption has been mentioned only

once, and even then, only in a cursory manner.

Killian, 45 F.4th at 1382. The Federal Circuit “has

strayed too far from the preemption concerns that motivate the judicial exception to patent eligibility.” Am.

Axle, 966 F.3d at 1363 (Stoll, J., dissenting). What was

once “part and parcel with the § 101 inquiry” is now

an afterthought. Return Mail, Inc. v. United States

Postal Serv., 868 F.3d 1350, 1370 (Fed. Cir. 2017).

C. The Federal Circuit's rulings are hindering innovation.

The Constitution in the Patent Clause grants Congress the authority over patents to “promote the

Progress of Science and useful Arts.” U.S. Const. art.

I, § 8, cl. 8. The Patent Clause aims to balance the

need for encouraging innovation with avoiding monopolies. Bonito Boats, Inc. v. Thunder Craft Boats,

Inc., 489 U.S. 141, 146 (1989). The purpose of patents

is “to promote creation.” Ass’n for Molecular Pathology

v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013). Section 101 is broad for this reason. Congress adopted a

“permissive approach to patent eligibility to ensure

that ingenuity should receive a liberal encouragement.” Bilski, 561 U.S. at 601.

The Federal Circuit’s twisting of § 101 “pose[s] a

substantial threat to the patent system’s ability to accomplish its mission.” Bonito Boats, 489 U.S. at 161.

“[P]recision has been elusive in defining an all-purpose boundary between the abstract and the concrete,

leaving innovators and competitors uncertain as to

their legal rights.” Internet Pats., 790 F.3d at 1345.

The Federal Circuit’s “rulings on patent eligibility

have become so diverse and unpredictable as to have

a serious effect on the innovation incentive in all fields

of technology.” Am. Axle, 966 F.3d at 1357 (Newman,

J., dissenting); accord Yu, 1 F.4th at 1049 (Newman,

J., dissenting) (“In the current state of Section 101 jurisprudence, inconsistency and unpredictability of

adjudication have destabilized technologic development in important fields of commerce.”).

“Numerous scholars, practitioners, and Congresspeople have observed that the current law of § 101

creates uncertainty and stifles innovation.” Realtime,

2023 WL 4924814, at *12 (Newman, J., dissenting). A

few are:

•

Former USPTO director Andrei Iancu (2018–

2021) testified that patent eligibility uncertainty

has

“stymied

research

and

development, investment, and innovation, and

has hurt competition and the U.S. economy.”

Iancu, The Patent Eligibility Restoration Act:

Hearings on S. 2140 Before the Subcomm. on

Intell. Property, 118th Cong. 4, 13 (Jan. 23,

2024).

•

Former president of the American Intellectual

Property Law Association Barbara Fiacco

(2019–2020) explained that § 101 caselaw has

“reduced investment in new technologies.” Fiacco, Testimony Before the S. Subcomm. on

Intell. Prop., at 2 (June 5, 2019).

•

Professor Shahrokh Falati of New York University Law School opined that § 101’s

uncertainty leads investors to shift their “investments away from companies” developing

technology inflicted by § 101 unpredictability,

“harming the innovation economy in the U.S.”

Falati, To Promote Innovation, Congress

Should Abolish the Supreme Court Created Exceptions to 35 U.S. Code § 101, 28 Tex. Intell.

Prop. L.J. 1, 36 (2019).

•

U.S. Senator Thom Tillis of North Carolina,

Chairman of the Senate Judiciary Committee's Subcommittee on Intellectual Property,

recently pronounced that “clear, strong, and

predictable patent rights are imperative to enable investments in the broad array of

innovative technologies that are critical to the

economic and global competitiveness of the

United States, and to its national security. . . .

Unfortunately, our current Supreme Court’s

patent eligibility jurisprudence is undermining American innovation and allowing foreign

adversaries like China to overtake us in key

technology innovations.” Tillis, Press Release,

supra Part I.A.4.

Without this Court’s intervention regarding § 101,

inventors, consumers, investors, and the nation will

continue to experience significant harm.

II.

This case effectively addresses the question

presented and is ripe for review.

This Court has previously declined to revisit § 101,

but this case presents an exceptional opportunity because the § 101 question is clear, the technology is

simple, and the factual record is straightforward. The

primary issue determined by the lower courts was

whether AED’s patents are patent-eligible under §

101. The decisions of the lower courts highlight the

confusion surrounding § 101. The Claims Court conflated steps one and two of the Alice/Mayo framework

by concluding at both stages that the patents are invalid because the claims describe well-understood and

conventional techniques and components. Compare

App.39a and App.42a, with App.43a, App.45a, and

App.47a. This approach blurred the distinctions between § 101 and the patentability requirements of

novelty and obviousness under §§ 102 and 103. The

Federal Circuit confirmed this approach with its Rule

36 summary affirmance.

III. The Federal Circuit’s application of Rule 36

to cases like this runs afoul of normative

rules of decision and deserves this Court's

attention.

“[A] decision without principled justification [is] no

judicial act at all.” Planned Parenthood of Se. Pa. v.

Casey, 505 U.S. 833, 865 (1992). The law is learned

“by studying the judicial opinions that invented it.”

Antonin Scalia, A Matter of Interpretation: Federal

Courts and the Law 4, 30 (1997). There is a long appellate tradition of explaining decisions–of not just

“declaring justice between man and man, but of settling the law.” Benjamin N. Cardozo, Jurisdiction of

the Court of Appeals (2d ed. 1909) § 6; see also Carter

v. Stanton, 405 U.S. 669, 672 (1972) (vacated and remanded because the district court’s order was “opaque

and unilluminating as to either the relevant facts or

the law.”); Bush v. Palm Beach County Canvassing

Bd., 531 U.S. 70, 78 (2000) (remanding because there

was “considerable uncertainty as to the precise

grounds for the decision[]” (citation omitted)); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811

(1986) (remanding for clarification due to “lack [of] an

adequate explanation of the basis for the Court of Appeals’ judgment”).

The Federal Circuit’s established practice of issuing one-word decisions on the merits under its Local

Rule 36 runs afoul of the rules and standards other

Courts of Appeal require their district courts to follow.

[W]e have many times emphasized the importance of a detailed discussion by the trial

judge. . . . [If] we have no notion of the basis for

a district court’s decision, because its reasoning

is vague or simply left unsaid, there is little opportunity for effective review. In such cases, we

have not hesitated to remand the case for an illumination of the court’s analysis through some

formal or informal statement of reasons.

McIncrow v. Harris Cty., 878 F.2d 835, 853 (5th Cir.

1989) (reversing summary adjudication); see also

Campbell v. Hewitt, Coleman & Assocs., Inc., 21 F.3d

52, 55–56 (4th Cir. 1994) (vacating district court decision granting summary judgment because “[t]he

district court stated no facts on which it relied.”); Gillis v. Hoechst Celanese Corp., 4 F.3d 1137, 1149 (3d

Cir. 1993) (district court’s order vacated and remanded “so that the basis for the decision [could] be

explicated by the district court and an appropriate order [could] be entered.”); Van Bourg, Allen, Weinberg

& Roger v. NLRB, 656 F.2d 1356, 1358 (9th Cir. 1981)

(summary judgment vacated and remanded “so the

district court [could] state in reasonable detail the reasons for its decision as to each document in dispute.”).

The failure of courts to provide well-reasoned orders “runs contrary to the interest of judicial efficiency

by compelling the appellate court to scour the record

in order to find evidence in support of the decision.”

Couveau v. Am. Airlines, Inc., 218 F.3d 1078, 1080

(9th Cir. 2000) (internal quotation marks and citation

omitted). Failing to provide well-reasoned, written decisions causes appellate courts to be “handicapped in

[their] review.” Peck v. Bridgeport Machines, Inc., 237

F.3d 614, 617 (6th Cir. 2001). By contrast, issuing

“written opinion[s] explaining [a] ruling and the reasoning, factual and legal, in support” serves the

“reviewing court and . . . the parties . . . much better.”

Id. “Some form of a written opinion memorializing the

district court’s ruling eliminates [the] problem” of appellate courts having to “second guess.” Bellamy v.

Bradley, 729 F.2d 416, 418 (6th Cir. 1984).

The Federal Circuit has issued hundreds of oneword decisions on the merits. The problem is extensive: one decision without any supporting opinion

issues for every three decisions with reasoning.

Rantanen, J., Missing Decisions and the United States

Court of Appeals for the Federal Circuit, 170 U. Penn.

L. Rev. Online 73, 80 (2022) (reporting in Table 1 that,

from 2007 through 2020, the Federal Circuit issued

one Rule 36 decision for every 2.7 opinions); Charles

R. Macedo et al., Justice is Not Silent: The Case

Against One-Word Affirmances in the Federal Circuit

(Sept.

22,

2024),

https://patentlyo.com/patent/2024/09/appellate-decision-reasoning.html. Oneword affirmances account for over 35% of all appeals,

45% of appeals from the USPTO, and approximately

35% of judgments stemming from district court or

USPTO decisions over the past ten years. Id.

The Federal Circuit’s regular practice is enshrined

in an extraordinarily broad rule:

The court may enter a judgment of affirmance

without opinion, citing this rule, when it determines that any of the following conditions exist

and an opinion would have no precedential

value: (a) the judgment, decision, or order of the

trial court appealed from is based on findings

that are not clearly erroneous; (b) the evidence

supporting the jury’s verdict is sufficient; (c) the

record supports summary judgment, directed

verdict, or judgment on the pleadings; (d) the

decision of an administrative agency warrants

affirmance under the standard of review in the

statute authorizing the petition for review; or

(e) a judgment or decision has been entered

without an error of law.

Fed. Cir. R. 36.

Rules 36(a) through (e) cover all bases for affirmance, so any court decision can fit into them. The

Federal Circuit issues Rule 36 judgments without explanation, leaving litigants to guess the reasoning

behind the decisions.

The greater the clarity with which a court

states the propositions that led it to its decision,

the greater the certainty with which those who

wish to structure their affairs in compliance

with the law will be able to do so. The same applies to judges who must act in accordance with

the law articulated in those opinions and to

lawyers who must make arguments and advise

clients on the basis of them.

Oldfather, C., Writing, Cognition, and the Nature of

the Judicial Function, 96 Geo. L.J. 1283, 1330–31

(2008). Requiring litigants to employ guesswork undermines the doctrine of stare decisis. A Rule 36

affirmance violates the principles upon which the Judicial branch was established. See The Federalist No.

78 (Alexander Hamilton) (“To avoid an arbitrary discretion in the courts, it is indispensable that they

should be bound down by strict rules and precedents,

which serve to define and point out their duty in every

particular case that comes before them.”). Simply put,

a Rule 36 affirmance is a decision without judgment.

Rule 36 denies meaningful appellate review to litigants. Rule 36 decisions provide no rationale,

undermining the development of consistent legal principles. Congress created the Federal Circuit after a

long history of conflicting and inconsistent patent law

decisions. See The Federal Courts Improvement Act of

1982, Publ. L. No. 97-164, 96 Stat. 25. Yet Rule 36 undermines consistency in patent law. Rule 36 impedes

the clarification of patent law in areas where guidance

is needed. By providing no reasons for its decisions,

the Federal Circuit leaves this Court with the work of

identifying the basis for the decision as a prerequisite

for determining whether or not to grant certiorari—

which means, as a practical matter, that Rule 36 judgments insulate the Federal Circuit’s decisions from

this Court’s review. In other cases where the record

failed to provide this Court with the benefit of “the insight of the Court of Appeals,” this Court has granted

petitions for writ of certiorari, vacated the judgments

below, and remanded the cases to the courts of appeals for proceedings in conformity with this Court’s

opinions. Taylor v. McKeithen, 407 U.S. 191, 194

(1972).

Rule 36 places the imprimatur of the Federal Circuit’s summary affirmances on decisions of lower

courts that may be the worst examples for lower

courts to follow. The Rule 36 affirmance tells lower

courts that a decision is good law, despite the possible

presence of multiple errors as in this case. This encourages lower courts to emulate the errors contained

in those dispositions without clarification or correction.

The Federal Circuit’s Rule 36 judgments often

come in cases involving irregularities raising due process concerns like in this case. For example, the

Claims Court invalidated AED’s Asserted Patents in

their entirety instead of identifying specific claims

that failed to satisfy § 101. The Claims Court’s expansive invalidation was contrary to law and deserved

some commentary by the Federal Circuit.

This Court previously confronted a different “regular and offensive practice” of the Federal Circuit in

Cardinal Chemical Co. v. Morton International. At issue there was the Federal Circuit’s practice of

vacating declaratory judgments of patent validity (or

invalidity) based on mootness in appeals where the

Federal Circuit was convinced that the lower court’s

finding of noninfringement resolved the controversy

between the litigants. This Court granted the petition

for certiorari because the Federal Circuit “has exclusive jurisdiction over appeals from all United States

District Courts in patent litigation, [and] the rule that

it applied in this case, and has been applying regularly since its 1987 decision in Vieau v. Japax, Inc.,

823 F.2d 1510, is a matter of special importance to the

entire Nation.” Cardinal Chem. Co. v. Morton Int'l,

508 U.S. 83, 89 (1993).

So too is the issue here one of special importance.

Rule 36 judgments provide no rationale, factual findings, conclusions of law, analysis, or explanation. The

problem is an acute lack of transparency. Add to this

the potential for violating constitutional principles

such as Due Process and Equal Protection by denying

meaningful appellate review. U.S. Const. amend. XIV,

§ 1; see Townes v. Alabama, 586 U.S. 977, 980 (2018)

(“A reliable, credible record is essential to ensure that

a reviewing court—not to mention the defendant and

the public at large—can say with confidence whether

those fundamental rights have been respected.”); Parker v. Dugger, 498 U. S. 308, 321 (1991) (“It cannot be

gainsaid that meaningful appellate review requires

that the appellate court consider the defendant’s actual record”). The practice also conflicts with the

requirement that the Federal Circuit issue “its mandate and opinion” from a decision of the Patent Trial

and Appeal Board. 35 U.S.C. § 144.

But most critically, the practice of one word affirmances impedes the development and clarification of

patent law, especially for patent eligibility under Alice/Mayo—the issue directly presented in this case.

“Since there is no opinion, a Rule 36 judgment simply

confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of

the trial court's reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed. Cir. 2012).

Nonetheless, involved parties may need to understand

which, if any, issues a Rule 36 decision foreclosed from

reconsideration. A case addressing such foreclosure

has revealed that, even among Federal Circuit judges,

there may be a reasonable dispute as to whether the

underlying disposition was decided on alternative

grounds. TecSec, Inc. v. IBM Corp., 731 F.3d 1336,

1350–51 (Fed. Cir. 2013) (Reyna, J., dissenting as to

whether the disposition affirmed by a Rule 36 judgment was based on alternative grounds). That case

recognized that, where a Rule 36 decision affirms a

disposition decided on alternative grounds, as is common, the parties and the public have no way to

determine what justification the Federal Circuit may

have relied on for its decision. Id. at 1342–43. Accordingly, each Rule 36 decision requires the public to

simply trust that the Federal Circuit has some undisclosed, but principled, justification.

Any justification for a Rule 36 decision is not just

undisclosed, but also potentially unknowable. The legitimacy of a one-word decision thus relies on the

public confidence that the Federal Circuit must have

a principled justification. But by frequently offering

no justification for its decisions, the Federal Circuit

erodes public confidence that each of its decisions has

a principled justification. The Federal Circuit’s oneword decision in the instant case is worthy of review

because such decisions undermine the legitimacy of

the federal appellate judiciary and the country’s ability to see itself as a country bound by well-reasoned

rules of law—not by the whim of those who happen to

have authority at the time.

CONCLUSION

This Court should grant certiorari.

Respectfully submitted.

PETER J. CORCORAN III

Counsel of Record

CORCORAN IP LAW PLLC

4142 McKnight Road

Texarkana, Texas 75503

903.701.2481

peter@corcoranip.com

JOEL B. ROTHMAN

SRIPLAW, P.A.

21301 Powerline Road

Suite 100

Boca Raton, Florida

33433

Counsel for Petitioner

January 27, 2025

APPENDIX

TABLE OF APPENDICES

Page

A PPENDI X A — J U DGMENT OF THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT, FILED

MAY 14, 2024 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1a

A P P E N DI X B — O P I N ION O F T H E

UNITED STATES COURT OF FEDERAL

CLAIMS, FILED SEPTEMBER 21, 2022 . . . . . . . 3a

APPENDIX C — OPINION OF THE UNITED

STATES COURT OF FEDERAL CLAIMS,

FILED JULY 1, 2022 . . . . . . . . . . . . . . . . . . . . . . . . 14a

APPENDIX D — ORDER OF THE UNITED

STAT ES COU RT OF A PPEA LS FOR

T H E F E DE R A L C I R C U I T, F I L E D

AUGUST 28, 2024 . . . . . . . . . . . . . . . . . . . . . . . . . . . 49a

Appendix A OF THE UNITED

APPENDIX A — JUDGMENT

STATES COURT OF APPEALS FOR THE

FEDERAL CIRCUIT, FILED MAY 14, 2024

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2023-1096

NOTE: This disposition is nonprecedential.

AUDIO EVOLUTION DIAGNOSTICS, INC.,

Plaintiff-Appellant,

UNITED STATES, GLOBALMEDIA GROUP, LLC,

Defendants-Appellees.

Appeal from the United States Court of Federal Claims

in No. 1:20-cv-01384-PEC, Judge Patricia E. CampbellSmith.

Filed May 14, 2024

JUDGMENT

P ETER JOSEPH C ORCORAN, III, Corcoran IP Law

PLLC, Texarkana, TX, argued for plaintiff-appellant. Also

represented by JOEL BENJAMIN ROTHMAN, SRIPLAW,

PA, Boca Raton, FL.

Appendix A

GRANT DREWS JOHNSON, Commercial Litigation

Branch, Civil Division, United States Department of

Justice, Washington, DC, argued for defendant-appellee

United States. Also represented by BRIAN M. BOYNTON,

SCOTT DAVID BOLDEN, GARY LEE H AUSKEN.

MARY HALLERMAN, Snell & Wilmer, LLP, Washington,

DC, for defendant-appellee GlobalMedia Group, LLC. Also

represented by DEREK CONOR FLINT, BRETT WILLIAM

JOHNSON, Phoenix, AZ.

THIS CAUSE having been heard and considered, it is

ORDERED and A DJUDGED:

PER CURIAM (REYNA , TARANTO, and HUGHES, Circuit

Judges).

AFFIRMED. See Fed. Cir. R. 36.

Entered by Order of the Court

May 14, 2024

Date

APPENDIX B — Appendix

OPINIONBOF THE UNITED

STATES COURT OF FEDERAL CLAIMS,

FILED SEPTEMBER 21, 2022

UNITED STATES COURT OF FEDERAL CLAIMS

No. 20-1384C

Reconsideration; RCFC 59(e);

Amendment; RCFC 15; Futility;

Failure to Cure Deficiencies.

AUDIO EVOLUTION DIAGNOSTICS, INC.,

Plaintiff,

UNITED STATES,

Defendant,

and

GLOBALMEDIA GROUP, LLC,

Third-party Defendant.

Filed September 21, 2022

OPINION

CAMPBELL-SMITH, Judge.

Before the court are plaintiff’s motion to vacate

judgment and plaintiff ’s motion to alter or amend

Appendix B

judgment pursuant to Rule 59(e) of the Rules of the United

States Court of Federal Claims (RCFC), and plaintiff’s

motion for leave to amend its complaint pursuant to RCFC

15(a)(2). See ECF No. 60 (motion to vacate judgment); ECF

No. 62 (motion to amend judgment); ECF No. 61 (motion

for leave to file amended complaint, attaching proposed

third amended complaint). Plaintiff filed its motions on

August 3, 2022, see ECF Nos. 60-62, and defendant filed

its responses to each motion on August 31, 2022, see ECF

No. 63 (response to plaintiff’s motion to vacate); ECF No.

64 (response to plaintiff’s motion for leave to amend); ECF

No. 65 (response to plaintiff’s motion to amend judgment).

Briefing is now complete, and the motions are ripe

for decision. The court has considered all of the parties’

arguments and addresses the issues that are pertinent

to the court’s rulings in this opinion. For the reasons set

forth below, plaintiff’s motions are each DENIED.

Background

Plaintiff filed its original complaint on October 13,

2020, alleging patent infringement by the United States.

See ECF No. 1 (complaint). Defendant moved to dismiss

plaintiff’s complaint on December 14, 2020, arguing in

relevant part that plaintiff’s claims should be dismissed for

failure to state a claim because plaintiff’s asserted patents

are “ineligible for protection under 35 U.S.C. § 101” as

abstract ideas. ECF No. 9 at 6 (motion to dismiss). In

response, plaintiff moved to amend its complaint, which

the court permitted, see ECF No. 25 (order), and plaintiff

filed its first amended complaint on February 24, 2021,

see ECF No. 26 (first amended complaint). Defendant

Appendix B

then moved to dismiss plaintiff’s amended complaint on

the same basis as its first motion to dismiss. See ECF No.

27 (motion to dismiss amended complaint). After briefing

on defendant’s motion was complete, the court ordered

plaintiff to file a more definite statement of its claim

pursuant to RCFC 12(e) in the form of a second amended

complaint, and, consequently, denied defendant’s second

motion to dismiss as moot. See ECF No. 41 at 2-3 (order).

On November 5, 2021, plaintiff filed its second

amended complaint. See ECF No. 42 (second amended

complaint). In response, defendant filed a third motion

to dismiss, again making the same arguments. See ECF

No. 47 (motion to dismiss second amended complaint).

The court dismissed plaintiff’s complaint on July 1, 2022,

and judgment was entered that same day. See ECF No.

54 (opinion, reported at Audio Evolution Diagnostics,

Inc. v. United States, 160 Fed. Cl. 513 (2022)); ECF No.

55 (judgment). In so doing, the court held that “plaintiff’s

asserted patents are directed at the abstract idea of

‘collecting, analyzing, manipulating, and displaying

data,’ and ‘filtering patient [physical] signals to increase

accuracy.’” Id. at 16 (citations omitted). And the court

further held that, “plaintiff’s complaint does not recite

specific, plausible factual allegations ‘sufficient to ensure

that the patent in practice amounts to significantly more’

than the abstract idea itself,” or “‘point[ ] to evidence

suggesting [its] techniques had not been implemented in a

similar way,’ or ‘in a specific combination’ that would rise

to the level of inventiveness.” Id. at 18 (citations omitted).

The court thus determined that plaintiff’s asserted

patents are directed at ineligible subject matter and that

plaintiff failed to state a claim upon which relief can be

granted. See id. at 19.

Appendix B

II. Legal Standards

Motion to Vacate Judgment & Motion to Alter

or Amend Judgment

Plaintiff made both its motion to vacate judgment

and its motion to alter or amend judgment pursuant to

RCFC 59(e). See ECF No. 60 at 5; ECF No. 62 at 2. Rule

59(e) allows a party to file “[a] motion to alter or amend

a judgment . . . no later than 28 days after the entry of

the judgment.” A motion seeking “‘a substantive change

in the judgment’”—that is “‘a revision which disturbs or

revises legal rights and obligations that were settled by

the previous judgment’”—will be considered an RCFC

59(e) motion. Johnson v. United States, 127 Fed. Cl. 661,

663 (2016) (quoting Maxus Energy Corp. & Subsidiaries

v. United States, 31 F.3d 1135, 1139 (Fed. Cir. 1994); N.

States Power Co. v. United States, 79 Fed. Cl. 748, 749

(2007)). The court will grant a motion pursuant to RCFC

59(e) under “extraordinary circumstances,” including:

“(1) an intervening change in the controlling law; (2) the

availability of new evidence; or (3) the need to correct

clear error or prevent manifest injustice.” IAP Worldwide

Servs., Inc. v. United States, 141 Fed. Cl. 788, 801 (2019)

(internal citations omitted); see also Ajinomoto Co., Inc.

v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1350 (Fed.

Cir. 2000) (discussing the correlative Federal Rule of Civil

Procedure and applicable standard).

B. Motion to Amend a Complaint

Rule 15(a)(2) governs a motion for leave to amend a

complaint, which requires that leave to amend be “freely

Appendix B

given when justice so requires.” Where an amendment

after judgment has issued would do “no more than

state an alternative theory for recovery,” and where

“the underlying facts or circumstances relied upon by a

plaintiff may be a proper subject of relief . . . . the leave

sought should, as the rules require, be ‘freely given.’”

Foman v. Davis, 371 U.S. 178, 182, 83 S. Ct. 227, 9 L. Ed.

2d 222 (1962). Such leave, however, may be given only in

the absence of an “apparent or declared reason” to refuse

it, such as futility of amendment or “repeated failure to

cure deficiencies by amendments previously allowed.” Id.

III. Analysis

Plaintiff Has Not Demonstrated that Vacating

or Amending the Judgment Is Appropriate

Here

In its first motion, plaintiff argues that the court

should “vacate the findings in the judgment” because the

court “erred in failing to view the well-pled facts in the

[complaint] in the light most favorable to [p]laintiff,” relied

on case law that is “factually distinguishable and should

have no bearing over” plaintiff’s claims, and “ignored

the well-pled [facts] of the [complaint] . . . contravening

controlling law.”1 ECF No. 60 at 5-6. Plaintiff asserts in

1. Plaintiff also asserted that the recent issuance of another

of its patents constitutes newly discovered evidence of eligibility.

See ECF No. 60 at 6-7. According to plaintiff, this newly discovered

evidence renders meritless defendant’s argument in its motion to

dismiss that the United States Patent Office rejected the similar

claims of that patent on ineligibility grounds. See id. The court’s

Appendix B

its motion to amend judgment that, if the court denies its

motion to vacate the judgment, the court should amend

its judgment, which contains “a correctable error.” ECF

No. 62 at 2. According to plaintiff, it “only asserted patent

infringement” of two independent claims of its patents,

but the court’s judgment “does not delineate which specific

claims in the asserted patents are directed to ineligible

subject matter.” Id. Plaintiff therefore requests that the

court “limit its invalidity finding to apply only” to those

independent claims. Id. at 6.

Defendant responds that plaintiff ’s arguments

“merely reassert[] near-identical arguments” from its

opposition to the motion to dismiss and plaintiff “offers no

argument or evidence that could justify the extraordinary

relief of vacating the [c]ourt’s carefully considered

opinion.” ECF No. 63 at 4-5. According to defendant, the

court “has already thoroughly considered and rejected”

each of plaintiff’s arguments. Id. at 8; see also id. at 9,

10. Defendant further argues in its response to plaintiff’s

motion to amend the judgment that plaintiff “points to no

legal or factual error in the [c]ourt’s carefully considered

opinion,” that would justify amending the judgment. ECF

No. 65 at 4. Defendant contends that plaintiff’s second

decision was not premised on this argument, nor did the court

find it pertinent to address as part of its eligibility analysis. See

generally ECF No. 54; see also id. at 2 (noting that the court “has

considered all of the parties’ arguments and addresses only the

issues that are pertinent to the court’s ruling” in its opinion). The

court, therefore, cannot credit plaintiff’s argument that any newly

discovered evidence on this point is relevant to its decision and

declines to address the argument further in this opinion.

Appendix B

amended complaint asserted claims about the patents in

their entirety, the court “analyzed the asserted patents

and their claims in their entirety,” and plaintiff cannot

retroactively cabin the court’s judgment to only two

claims. Id. at 12; see also id. at 10-13.

The court agrees with defendant that plaintiff has not

demonstrated that vacating or amending the judgment

is appropriate in this case. Plaintiff articulates no

intervening change in the controlling law, relevant newly

discovered evidence, or need to correct clear factual or

legal error or to prevent manifest injustice in its motion.

See IAP Worldwide Servs., 141 Fed. Cl. at 801. Although

plaintiff asserts in its motion to vacate that the court failed

to follow the controlling law, it did so by arguing that

its “allegations were sufficient to contradict the court’s

conclusion.” ECF No. 60 at 9 (citing Aatrix Software,

Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1126

(Fed. Cir. 2018)). The court, however, stated in its opinion

that it had reviewed plaintiff’s allegations and its patents

and determined that “plaintiff has not articulated a clear

description of its patents” that would allow the court to

find in its favor. ECF No. 54 at 16 (citing Aatrix, 882

F.3d at 1125). Likewise, plaintiff’s claims of error fail to

articulate more than plaintiff’s disagreement with the

court’s conclusions. See ECF No. 60 at 10-14. Plaintiff’s

motion to vacate, therefore, fails to demonstrate the

“extraordinary circumstances” necessary for the court

to grant leave for reconsideration. IAP Worldwide Servs.,

141 Fed. Cl. at 801.

In the court’s view, plaintiff’s arguments in its motion

to vacate amount to an attempt to relitigate its prior

10a

Appendix B

arguments. See Froudi v. United States, 22 Cl. Ct. 290,

300 (1991) (“[A] motion for reconsideration is not a vehicle

for giving an unhappy litigant an additional chance to

sway the judge, nor is it intended to allow a party to

make arguments already presented to, and rejected by,

the court.”). Plaintiff’s claims of error are therefore more

appropriate for resolution on appeal.

Likew ise, in its motion to alter or amend the

judgment, plaintiff fails to articulate any extraordinary

circumstance that would support its argument that the

court’s judgment should be amended to apply to only

two of plaintiff’s independent claims. See ECF No.

62 at 3-6. Although plaintiff is correct that the court

noted the independent claims specified by plaintiff in

its opinion, plaintiff’s argument that it “only asserted

patent infringement over [two] independent claim[s]” is

disingenuous. Id. at 2; see also id. at 5 (noting that the

court referred to the two specific claims in its opinion).

Plaintiff emphasized in its second amended complaint that

defendant had infringed “at least” the two independent

claims, ECF No. 42 at 33-34, and stated in its response

to defendant’s motion to dismiss that its second amended

complaint “identifies many more claims from the patents,”

and that it “reserve[d] the rights to assert all the claims

of the Asserted Patents that are infringed,” ECF No. 51

at 15 n.8. The court thus analyzed the patents in their

entirety in its opinion. See generally ECF No. 54. In the

court’s view, the judgment as to the whole of both patents

is appropriate, and plaintiff fails to articulate a proper

basis for altering or amending the judgment in this case.

11a

Appendix B

The court declines to disturb its judgment in this

case, and both plaintiff’s motion to vacate judgment and

plaintiff’s motion to alter or amend judgment are denied.

B. Plaintiff’s Amendment Would Be Futile

In Foman, the Supreme Court of the United States

held that where an amendment after judgment has

issued would do “no more than state an alternative

theory for recovery,” and where “the underlying facts or

circumstances relied upon by a plaintiff may be a proper

subject of relief . . . . the leave sought should, as the rules

require, be ‘freely given.’” Foman, 371 U.S. at 182. The

Court went on to clarify that such leave must be given in

the absence of an “apparent or declared reason” to refuse

it, such as futility of amendment or “repeated failure to

cure deficiencies by amendments previously allowed.”

Id. The United States Court of Appeals for the Federal

Circuit has not addressed Foman and the applicable

standard for post-judgment motions to amend pleadings.

Therefore, despite the fact that a judgment has been

entered in this case and reconsideration under RCFC 59(e)

is not warranted, the court must consider plaintiff’s motion

to amend its complaint and will proceed with the analysis

set forth in Foman to determine whether amendment is

appropriate here.

In its opinion dismissing plaintiff’s second amended

complaint, the court set forth in detail the reasons that

plaintiff could not state the infringement claims alleged

in its complaint. See ECF No. 54 at 12-19. Plaintiff now

seeks leave to amend its complaint a third time to “recite[]

12a

Appendix B

sufficient allegations that overcome Alice [Corp. Pty, Ltd.

V. CLS Bank Int’l, 573 U.S. 208, 134 S. Ct. 2347, 189 L.

Ed. 2d 296 (2014)] and the deficiencies noted in the court’s

order dismissing the second amended complaint.” ECF

No. 61 at 4 (capitalization removed). Plaintiff argues that

in addition to “satisfy[ying] the concerns and deficiencies

identified by this [c]ourt’s decision,” its proposed third

amended complaint “asserts additional factual allegations

that the claims are patent eligible, based on new evidence

of the issuance” of a related patent. Id. at 5 (capitalization

removed). Defendant responds that the amendment

“cannot change the fact that the underlying asserted

patents are directed to patent-ineligible subject matter.”

ECF No. 64 at 6. Defendant also argues that the proposed

third amended complaint “merely reasserts arguments

previously raised by [p]laintiff.” Id.; see also id. at 7-11

(comparing allegations in the third amended complaint

with arguments previously raised by plaintiff).

In the court’s view, leave to amend should be denied

because plaintiff’s amendment would be futile, and

plaintiff has “repeated[ly] fail[ed] to cure deficiencies by

amendments previously allowed.” Foman, 371 U.S. at 182;

see also Chapman v. United States, 130 Fed. Cl. 216, 219

(2017) (collecting cases regarding futility of amendments).

Prior to the court’s decision, plaintiff amended its

complaint twice, first in response to defendant’s motion

to dismiss on eligibility grounds and once in response to

the court’s request for a more definite statement. See ECF

No. 25 (order granting first motion to amend); ECF No. 41

(order directing plaintiff to file a more definite statement).

In its opinion dismissing plaintiff’s second amended

13a

Appendix B

complaint, the court reviewed the patents and determined

that “[t]he facts regarding the ‘character as a whole’ of

the asserted patents are clear and undisputed,” that they

are “directed at the abstract idea of ‘collecting, analyzing,

manipulating, and displaying data,’ and ‘filtering patient

[physical] signals to increase accuracy.’” ECF No. 54 at

16 (citations removed). The court also found that plaintiff

failed to sufficiently allege inventiveness, and therefore,

its patents “are directed to ineligible subject matter.”

Id. at 19. Given the history of this case and the court’s

thorough consideration of the patents as a whole, a third

amendment would be futile. Plaintiff’s motion to amend

is therefore denied.

IV. Conclusion

Accordingly, for the foregoing reasons:

(1) Plaintiff’s motion to vacate judgment, ECF No.

60, is DENIED;

(2) Plaintiff’s motion for leave to file an amended

complaint, ECF No. 61, is DENIED; and

(3) Plaintiff’s motion to amend judgment, ECF No.

62, is DENIED.

IT IS SO ORDERED.

/s/ Patricia E. Campbell-Smith

PATRICIA E. CAMPBELL-SMITH

Judge

14a

Appendix COF THE UNITED

APPENDIX C — OPINION

STATES COURT OF FEDERAL CLAIMS,

FILED JULY 1, 2022

IN THE UNITED STATES COURT OF

FEDERAL CLAIMS

No. 20-1384C

(E-Filed: July 1, 2022)

AUDIO EVOLUTION DIAGNOSTICS, INC.,

Plaintiff,

UNITED STATES,

Defendant,

and

GLOBALMEDIA GROUP, LLC,

Third-party Defendant.

Motion to Dismiss; RCFC 12(b)(1); RCFC 12(b)(6);

35 U.S.C. § 101; Patent-Eligible Subject Matter;

Abstract Idea; Inventive Concept

15a

Appendix C

OPINION

CAMPBELL-SMITH, Judge.

Before the court is defendant’s motion to dismiss

pursuant to Rules 12(b)(1) and 12(b)(6) of the Rules of the

United States Court of Federal Claims (RCFC). See ECF

No. 47. Defendant filed its motion on December 3, 2021, in

which third-party defendant joined, see ECF No. 48, and

plaintiff filed its response on January 24, 2022, see ECF

No. 51. Defendant filed a reply on February 7, 2022, see

ECF No. 52, in which third-party defendant also joined,

see ECF No. 53. The motion is now fully briefed and ripe

for decision.

The court has considered all of the parties’ arguments

and addresses the issues that are pertinent to the

court’s ruling in this opinion. For the following reasons,

defendant’s motion to dismiss is GRANTED.

Background1

The Patents

At issue in this case are United States Patent

Number 8,920,343, entitled “Apparatus for Acquiring and

Processing of Physiological Auditory Signals” (the “’343

Patent”), and United States Patent Number 8,870,791,

1. The facts are taken from plaintiff’s second amended

complaint and are undisputed by defendant in its motion to dismiss.

The court makes no findings of fact here.

16a

Appendix C

entitled “Apparatus for Acquiring, Processing and

Transmitting Physiological Sounds” (the “’791 Patent”).

See ECF No. 42 at 1, 3 (second amended complaint).

Both the ’343 Patent and the ’791 Patent describe

and claim “an apparatus and system . . . for collecting,

processing, and recording sounds associated with the

physiologic activities of various human organs.” ECF No.

42 at 2; see also ECF No. 42-5 at 50 (’343 Patent describing

the invention as the “digital recording, processing and

analysis of . . . physiologic sounds”). To do so, the system

utilizes one or more transducers, which are placed on the

body and detect the organ sounds as analog data signals.

See ECF No. 42 at 2. The analog data signals are then

converted to digital signals by a converter, and the digital

signals are transmitted to an electronic apparatus (e.g., a

computer workstation) that processes, views, and analyzes

the data through an analysis program. See id. The data

is displayed on a “compact, customizable device” that

uses “a simple interface” to allow medical professionals

with limited knowledge of technology to analyze and

manipulate the data. ECF No. 42-5 at 50; see also ECF

No. 42-7 at 48 (’791 Patent). The object of the apparatus

described in the patents is “facilitating the diagnosis of

certain diseases” using the analyzed data, ECF No. 42-5

at 50, thereby “dramatically improv[ing] efficiency in the

healthcare system and clinical outcomes for patients,”

id. at 51.

The inventions described in the ’343 Patent and the

’791 Patent purport to improve on other, similar devices in

a number of ways. See ECF No. 42 at 4 (“The technology

17a

Appendix C

field for acquiring, processing, and transmitting

physiological organ sounds experienced disadvantages by

March 23, 2006, that the invention disclosed and claimed

in the Asserted Patents overcame.”). The patents purport

to describe a device that is more useful to physicians

of “ordinary ability” working in a clinical setting. Id.

at 4-5 (describing the disadvantages of other systems

available prior to the system at issue here to physicians

of “ordinary ability”). According to plaintiff, the device

does so by “providing a simple interface which allows

medical professionals with limited technical background

to easily manipulate vital parameters . . . , and applying

data windows without the need for computer programming

knowledge.” ECF No. 42-5 at 50.

Additionally, the ’343 Patent and the ’791 Patent claim

to “boost the accuracy” of the recorded physiological

sounds by taking additional measures to prevent

extraneous sounds from influencing the analysis of the

physiological sounds collected. ECF No. 42 at 10; see also

ECF No. 42-5 at 50 (“Another object of this invention is

to boost the accuracy of recording physiological sounds

by providing the physician with an efficient method of

eliminating background noise . . . from the desired signal

in real time.”). Plaintiff claims that this is done, at least in

part, through the use of a “parallel to serial converter,”

which converts the physiological sounds collected “from

and to” the analog data signals. ECF No. 42 at 10

(referring to portions of the patent describing the “parallel

to serial converter” and “serial to parallel converter” as

support for the patents’ goal of boosting the accuracy of

physiological sounds by eliminating background noise).

18a

Appendix C

B. Plaintiff’s Claims of Infringement

The specific claims at issue in this case are independent

claim 39 of the ’343 Patent and independent claim 17 of

the ’791 Patent. See ECF No. 42 at 33-34. Claim 39 reads

as follows:

A n appa ratus for a cqu i r i ng a nd processi ng

physiological sounds comprising:

a plurality of sensors each respectively

comprising a corresponding diaphrag m,

wherein at least one sensor is configured to

be positioned on a body surface, and at least

two sensors of said plurality of sensors are

configured to convert said physiological sounds,

in response to vibration of said corresponding

diaphragms by said physiological sounds, into

a corresponding plurality of electrical signals;

and

processing unit operatively coupled to said

plurality of sensors[,] said processing unit

configured to process a plurality of streams of

digital data representative of said corresponding

plurality of electrical signals, wherein at least

a portion of said plurality of streams of digital

data are input into a parallel to serial converter

to generate a serial output.

ECF No. 42-5 at 56 (alteration pursuant to the Certificate

of Correction, id. at 60). And Claim 17 of the ’791 Patent

reads:

19a

Appendix C

An apparatus for acquiring, processing and

transmitting physiological sounds comprising:

a plurality of sensors each respectively

comprising a corresponding diaphrag m,

wherein at least one corresponding diaphragm

is configured to be positioned on a body surface,

and at least two sensors of said plurality

of sensors are configured to convert said

physiological sounds, in response to vibration

of said corresponding diaphragms by said

physiological sounds, into a corresponding

plurality of electrical signals;

a corresponding plurality of analogue to

digital converters each operatively coupled to

a corresponding one sensor of said plurality

of sensors, said analogue to digital converters

configured to convert at least a portion of said

plurality of electrical signals into a plurality of

streams of digital data;

a processing unit operatively coupled to the

plurality of analogue to digital converters,

said processing unit configured to process said

plurality of streams of digital data, wherein at

least a portion of said plurality of streams of

digital data are input in parallel into a parallel

to serial converter to generate a serial output;

and

20a

Appendix C

a wireless network device configured for

wireless transmission of at least a portion of

said serial output in a first direction away from

said processing unit, and said wireless network

device is further configured for reception of an

input that is wirelessly transmitted in a second

direction towards said processing unit.

ECF No. 42-7 at 54.

According to plaintiff, defendant has used certain

accused products “manufactured by or for [d]efendant”

by GlobalMed and Iron Bow. See ECF No. 42 at 27-28.

Plaintiff includes an extensive list of telemedicine stations,

stethoscopes, cameras, probes, and system software

manufactured by the two companies. See id. Plaintiff

further provides a table of specific “illustrative” examples

of the infringement, which the court has condensed and

reproduced below 2:

2. For purposes of evaluating defendant’s motion the court

has partially reproduced the above table, contained in plaintiff’s

complaint. The table has been altered to omit internal citations

and to omit two columns of information that were not pertinent

to the issues raised in defendant’s motion. See ECF No. 42 at 28.

21a

Appendix C

Accused

Product(s)

GlobalMed

Clinical

Access

Station

(“CAS”),

ClearSteth

electronic

stethoscope

(“USB Chest

Piece”),

and

eNCounter

software with

ClearSteth

Module

Infringing InfringeAgency(ies)/ ment

Government Location(s)

Actor(s)

Naval

U.S. Naval

Medical

Logistics

Center

Command, Portsmouth,

Fort

Detrick,

U.S. Naval

Hospital

Date(s) of

Infringement

12/8/2017 to

12/8/2018

for Naval

Medical

Center

Portsmouth,

Guantanamo 12/8/2017 to

12/8/2018

Bay, Cuba;

for Naval

Naval Branch Hospital

Health

Jacksonville,

Clinic

Bahrain;

Naval

Hospital

Jacksonville,

FL;

Navy Branch

Medical

Clinic,

Albany, GA

Navy Branch

Medical

Clinic,

China Lake,

22a

Appendix C

GlobalMed

Transportable

Exam Station

(“TES”),

ClearSteth

electronic

Stethoscope

(“USB Chest

Piece”),

and

Naval

Medical

Logistics

Command,

Fort

Detrick,

Naval

Health

Clinic

Annapolis,

Naval

Medical

Center

Portsmouth,

U.S. Naval

eNCounter

Hospital

software with

Sigonella,

ClearSteth

Sicily, Italy

Module

GlobalMed

Department VA Rocky

i8500,

of Veteran’s Mountain

electronic

Affairs

Network,

stethoscope

4100 E.

(CareTone

Mississippi

Ultra or

Ave.,

StethOne

Suite 1100

streaming);

Glendale,

and

CO 80246

Capsure Vista

software

12/31/2019

12/31/2020

October

2009 to

Present

23a

Appendix C

GlobalMed

i8500,

electronic

stethoscope

(CareTone);

and

eNcounter

software

GlobalMed

Clinical

Access

Station

Department Ernest

04/14/2018

of Veteran’s Childers VA

Affairs

Outpatient

Clinic, 9322

E 41st St.

Tulsa, OK

74145

Department Oklahoma

09/10/2020

of Veteran’s City VA

Affairs

Medical

Center, 921

NE 13th St,

Oklahoma

City, OK

73104

GlobalMed

White

The White

08/03/2017

Clinical

House

House,

Access Station Medical

Roosevelt

(“CAS”) and Unit and

Room, 1600

Transportable Department Pennsylvania

Exam

of Veteran’s Avenue NW,

Station,

Affairs

Washington,

DC 20500

ClearSteth

electronic

stethoscope

(“USB Chest

Piece”); and

eNCounter

software.

24a

Appendix C

GlobalMed

i8500,

CareTone

Ultra

Telephonic

Stethoscope,

and

Department New

08/09/2017

of Veteran’s Albany VA

Affairs

Clinic, 4347

Security

Pkwy,

New Albany,

IN 47150

eNCounter

software

Id. at 28-33 (condensed and internal citations omitted).

The Prosecution History of the Patents

Dr. Michael Edward Sabatino, M.D., the named

inventor of the patents and the president, CEO, and

ninety-percent owner of plaintiff, filed the provisional

application for the patents with the United States Patent

and Trademark Office (PTO) on March 23, 2006. See id.

at 2-3 (citing ECF No. 42-1, Provisional Application for

Patent). On November 20, 2006, Dr. Sabatino filed the

non-provisional application for the ’343 patent. See id.

at 3 (citing ECF No. 42-2, patent application). Before

the PTO acted on the non-provisional application for

the ’343 Patent, on March 26, 2012, Dr. Sabatino filed

the non-provisional application for the ’791 Patent. See

id. (citing ECF No. 42-4, patent application). The nonprovisional application for the ’791 Patent noted that it

was a continuation of the non-provisional application for

the ’343 Patent. See id.

25a

Appendix C

The PTO examined the patent applications for more

than eight years and ultimately issued the ’791 Patent on

October 28, 2014, and the ’343 Patent on December 30,

2014. See id. Both patents were issued to Dr. Sabatino.

See id. On April 19, 2016, Dr. Sabatino assigned the ’343

Patent and the ’791 Patent to plaintiff pursuant to an

assignment agreement. See id. at 4; see also ECF No.

47-1 at 418-20 (agreement). On August 27, 2020, plaintiff

and Dr. Sabatino executed a new assignment agreement

that expressly revoked the 2016 agreement and granted

plaintiff “all right, title and interest in the Patents,

including the right to sue for all past, present, and future

infringement since the date of issue of the Patents.” ECF

No. 47-1 at 422.

Procedural History

Plaintiff filed its original complaint on October 13,

2020, alleging patent infringement by the United States

Department of Veterans Affairs (VA), 3 the Department of

Defense (DOD), and the Department of the Navy. See ECF

No. 1. Defendant moved to dismiss plaintiff’s complaint on

December 14, 2020, arguing that plaintiff’s claims should

be dismissed for failure to state a claim because plaintiff’s

asserted patents are “ineligible for protection under 35

3. Plaintiff refers to the “Veterans Administration” in its

complaint, see ECF No. 1 at 2, and the operative second amended

complaint, see ECF No. 42 at 2. The court understands plaintiff

to be referring to the Department of Veterans Affairs, as

evidenced by plaintiff’s referral to that agency elsewhere in its

second amended complaint. See ECF No. 42 at 30-32 (listing the

“infringing agency” as “Department of Veteran’s Affairs”).

26a

Appendix C

U.S.C. § 101” as abstract ideas. ECF No. 9 at 6. Defendant

also argued that “several other categories” of plaintiff’s

claims should be dismissed for lack of jurisdiction. Id. at

6-7. In response, plaintiff moved to amend its complaint

to “address[] the issues raised in the defendant’s motion

to dismiss.” ECF No. 18 at 1. The court granted plaintiff’s

motion, see ECF No. 25 (order), and plaintiff filed its first

amended complaint on February 24, 2021, see ECF No.

26 (first amended complaint).

Defendant moved to dismiss plaintiff’s amended

complaint, arguing as it had in its first motion to dismiss,

that plaintiff’s claims are not eligible for patent protection

and should therefore be dismissed. See ECF No. 27 at 6.

Defendant also again raised jurisdictional arguments to

several components of plaintiff’s claims. See id. at 7. In its

motion, defendant noted that plaintiff’s amended complaint

failed to include “any specific examples of [defendant’s]

use of the accused products.” Id. at 43. After briefing

on defendant’s motion was complete, the court ordered

plaintiff to file a more definite statement of its claim

pursuant to RCFC 12(e) in the form of a second amended

complaint. See ECF No. 41 at 2-3 (order). Specifically,

the court ordered plaintiff to provide additional detail

regarding the “specific dates and locations of the alleged

infringement,” and “a comprehensive list of the specific

agencies or government actors who committed the

alleged acts of infringement,” so that it can assess the

jurisdictional issues raised by defendant, which must be

considered before the court can reach the merits of the

case. Id. The court consequently denied defendant’s second

motion to dismiss as moot. See id. at 3.

27a

Appendix C

On November 5, 2021, plaintiff filed its second

amended complaint (complaint). See ECF No. 42. In

response, defendant filed the motion to dismiss currently

before the court, again arguing that plaintiff’s claims

should be dismissed because they are “ineligible for patent

protection under 35 U.S.C. § 101,” and that the court

lacks jurisdiction over “many of [p]laintiff’s infringement

allegations.” ECF No. 47 at 7-8.

II. Legal Standards

Motions to Dismiss Pursuant to RCFC 12(b)(1)

When a challenge is mounted pursuant to RCFC 12(b)

(1), plaintiff bears the burden of establishing this court’s

subject-matter jurisdiction by a preponderance of the

evidence. See Reynolds v. Army & Air Force Exch. Serv.,

846 F.2d 746, 748 (Fed. Cir. 1988); Cedars-Sinai Med.

Ctr. v. Watkins, 11 F.3d 1573, 1583 (Fed. Cir. 1993). In

reviewing plaintiff’s allegations in support of jurisdiction,

the court must presume all undisputed facts are true and

construe all reasonable inferences in plaintiff’s favor.

Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S. Ct. 1683, 40

L. Ed. 2d 90 (1974), abrogated on other grounds by Harlow

v. Fitzgerald, 457 U.S. 800, 814-15, 102 S. Ct. 2727, 73

L. Ed. 2d 396 (1982); Reynolds, 846 F.2d at 747 (citations

omitted). If, however, a motion to dismiss “challenges the

truth of the jurisdictional facts alleged in the complaint,

the . . . court may consider relevant evidence in order

to resolve the factual dispute.” Reynolds, 846 F.2d at

747. If the court determines that it lacks subject-matter

jurisdiction, it must dismiss the complaint. See RCFC

12(h)(3).

28a

Appendix C

B. Motions to Dismiss Pursuant to RCFC 12(b)(6)

When considering a motion to dismiss brought under

RCFC 12(b)(6), the court “must presume that the facts

are as alleged in the complaint, and make all reasonable

inferences in favor of the plaintiff.” Cary v. United States,

552 F.3d 1373, 1376 (Fed. Cir. 2009) (citing Gould, Inc. v.

United States, 935 F.2d 1271, 1274 (Fed. Cir. 1991)). It is

well-settled that a complaint should be dismissed under

RCFC 12(b)(6) “when the facts asserted by the claimant

do not entitle him to a legal remedy.” Lindsay v. United

States, 295 F.3d 1252, 1257 (Fed. Cir. 2002). “To survive

a motion to dismiss, a complaint must contain sufficient

factual matter, accepted as true, to ‘state a claim to relief

that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.

662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (quoting

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct.

1955, 167 L. Ed. 2d 929 (2007)). This requires “more than

a sheer possibility that a defendant has acted unlawfully,”

and “[t]hreadbare recitals of the elements of a cause of

action, supported by mere conclusory statements do not

suffice.” Id.; see also Am. Bankers Ass’n v. United States,

932 F.3d 1375, 1380 (Fed. Cir. 2019) (the court is “not

required to accept the asserted legal conclusions” in a

plaintiff’s complaint when assessing a motion to dismiss).

In evaluating a motion to dismiss for failure to state

a claim, the court “primarily consider[s] the allegations

in the complaint,” but is “not limited to the four corners

of the complaint,” and may also look to the “matters

incorporated by reference or integral to the claim.” See

Dimare Fresh, Inc. v. United States, 808 F.3d 1301,

29a

Appendix C

1306 (Fed. Cir. 2015) (citations omitted); see also Terry

v. United States, 103 Fed. Cl. 645, 652 (2012) (finding

that the court may consider the allegations contained in

the complaint, exhibits attached to the complaint, public

records of which the court may take judicial notice, and

documents appended to the motion to dismiss that are

central to plaintiff’s complaint).

III. Analysis

This Court Has Jurisdiction Over All of

Plaintiff’s Claims

Jurisdiction is a threshold issue that the court must

consider before reaching the merits of a case. See OTI

Am., Inc. v. United States, 68 Fed. Cl. 108, 113 (2005)

(“Jurisdiction must be established as a threshold matter

before the court may proceed with the merits of this or

any other action.”) (citing Steel Co. v. Citizens for a Better

Env’t, 523 U.S. 83, 88-89, 118 S. Ct. 1003, 140 L. Ed. 2d

210 (1998)). Accordingly, the court first addresses

defendant’s argument that it lacks jurisdiction over

certain of plaintiff’s claims. See id.; see also ECF No.

47 at 5. Defendant contends that: (1) the Assignment of

Claims Act (ACA), 31 U.S.C. § 3727, “divests this [c]ourt

of jurisdiction” over those claims that arose prior to the

patents being assigned to plaintiff in April 2016; (2) the

court does not have jurisdiction over those claims that

arose outside of the United States; and (3) any of the

claims involving accused products that were manufactured

or sold by AMD Global Telemedicine are precluded as a

matter of law because plaintiff has already raised and

30a

Appendix C

settled infringement claims against that entity. Id.; see

also id. at 41-44.

Plaintiff responds that the court has jurisdiction over

all claims asserted in the complaint, including those that

pre-date the assignment of the patents and that involve

products manufactured in the United States and later

shipped out of the United States. See ECF No. 51 at 42-43.

Plaintiff further contends that its claims do not involve

products manufactured by AMD Global Telemedicine

and, accordingly, defendant’s preclusion argument is

misplaced. See id. at 44.

The Assignment of Claims Act

The ACA, prohibits the assignment of a claim against

the United States unless the claim “is allowed,” the amount

is decided, and “a warrant for payment of the claim has

been issued.” 31 U.S.C. § 3727(b). The statute applies to

the assignment of patent claims “with respect to the right

to recover for past infringements of the patent.” MDS

Assoc., Ltd. v. United States, 31 Fed. Cl. 389, 393 (1994).

“Congress intended that the government would only be

subject to claims from the ‘original claimant,’ such that

unliquidated claims could not be assigned after they had

accrued.” 3rd Eye Surveillance, LLC v. United States,

133 Fed. Cl. 273, 277-78 (2017) (citing United States v.

Shannon, 342 U.S. 288, 291, 72 S. Ct. 281, 96 L. Ed. 321

(1952)). Thus, “voluntary assignments of patent claims are

ineffective against the government unless they qualify for

one of the[] judicially-recognized exceptions or otherwise

do not run afoul of the purposes of the Act.” Id. at 277. The

31a

Appendix C

court has previously held that where assignments are to

an “alter-ego partnership” and “the same individual or

partners possessed the equitable ownership of the claims

for purposes of infringement,” MDS Assocs, 31 Fed. Cl.

at 394, the ACA is not applicable because “none of the

Act’s purposes were implicated” in the assignment, Ideal

Innovations, Inc. v. United States, 138 Fed. Cl. 244, 251

(2018) (holding that the ACA was not implicated where the

inventor was also the president and CEO of the plaintiff

company).

Defendant argues that Dr. Sabatino did not assign

plaintiff the right to sue for past infringement until the

August 27, 2020 agreement, “and there is nothing to

suggest that any of the judicially recognized exceptions”

to the ACA applies. ECF No. 47 at 43. Defendant therefore

contends that the court lacks jurisdiction over any of

plaintiff’s infringement claims that occurred prior the

2016 assignment agreement. See id. at 42-43. Plaintiff

responds that Dr. Sabatino is “a 90% owner of [plaintiff]

and is its president and CEO,” making him the alter-ego

of plaintiff. ECF No. 51 at 42. According to plaintiff, as

the alter-ego, Dr. Sabatino “maintains the same or similar

equity interest in the claims . . . as he did before the

assignment,” meaning the assignment does not implicate

the ACA. Id. (citing Kingan & Co. v. United States, 44

F.2d 447, 451, 71 Ct. Cl. 19 (Ct. Cl. 1930).

In evaluating defendant’s motion, the court presumes

all undisputed facts are true and construes all reasonable

inferences in plaintiff’s favor if jurisdictional facts are not

challenged. See Scheuer, 416 U.S. at 236. The facts related

32a

Appendix C

to the ownership interests of plaintiff are of importance

to the court’s determination regarding the application

of the ACA. Defendant, however, has neither specifically

challenged—nor presented any evidence to contradict—

plaintiff’s assertion in its complaint that Dr. Sabatino

owns a ninety-percent interest in plaintiff. See ECF No.

47 at 41-43; ECF No. 52 (jurisdictional arguments not

addressed in defendant’s reply); see also ECF No. 42 at 2;

ECF No. 51 at 42. The court therefore must take plaintiff’s

assertion as true.

Plaintiff has presented sufficient, unchallenged

allegations that Dr. Sabatino, as the ninety-percent owner,

president, and CEO of plaintiff, is “essentially the same

claimant[]” as plaintiff. Ideal Innovations, 138 Fed. Cl. at

251 (holding that an inventor who was also the president

and CEO of the plaintiff was “effectively . . . the same”

as plaintiff and “essentially the same claimant”). As such,

and taking as true plaintiff’s allegation that the equitable

ownership of the claims has remained with Dr. Sabatino

as ninety-percent owner of plaintiff, the purposes of the

ACA are not implicated in the assignment of the patents.

See MDS Assocs., 31 Fed. Cl. at 394. Because the ACA is

not implicated in this case, defendant’s motion to dismiss

plaintiff’s claims arising prior to April 19, 2016, is denied.

ii.

Claims Arising Outside the United States

Defendant next argues that plaintiff’s claims arising

outside the United States must be dismissed for lack of

jurisdiction pursuant to the plain language of 28 U.S.C.

§ 1498(c), which provides that patent claims against the

33a

Appendix C

United States do not extend to “‘any claim arising in a

foreign country.’” ECF No. 47 at 43 (quoting 28 U.S.C.

§ 1498(c)). Plaintiff responds that its allegations relate

to the use or manufacture of the infringing products in

the United States prior to their use outside of the United

States. See ECF No. 51 at 43. According to plaintiff, while

an invention “may be shipped outside the U.S. for the

government’s use . . . liability remains for the unauthorized

manufacture of the patented invention in the U.S. before

the export.” Id. (citing Zoltek Corp. v. United States, 672

F.3d 1309, 1325 (Fed. Cir. 2012)).

The United States Court of Appeals for the Federal

Circuit held that “§ 1498(c) has no application” where “a

United States patent was allegedly infringed by activities

that took place within the United States.” Zoltek, 672

F.3d at 1327. Because defendant does not challenge the

jurisdictional facts, the court presumes all undisputed

facts are true and construes all reasonable inferences in

plaintiff’s favor. See Scheuer, 416 U.S. at 236. Plaintiff

does not specifically allege that the accused products were

manufactured in the United States, but does allege that the

products were manufactured “by or for [d]efendant.” ECF

No. 42 at 27. Drawing all inferences in favor of plaintiff,

the court credits plaintiff’s assertion in its response that

the infringing products were manufactured in the United

States although they were ultimately used in foreign

countries. See ECF No. 51 at 43; ECF No. 42 at 27-28,

33-34; see also id. at 28-33 (listing “infringing locations”).

In the court’s view, plaintiff’s allegations related to the

manufacture of infringing products in the United States

are sufficient to establish this court’s jurisdiction despite

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Appendix C

the final location of the use of the products. See Zoltek,

672 F.3d at 1327; see also ECF No. 51 at 43; ECF No. 42

at 27-28, 33-34. Defendant’s motion to dismiss plaintiff’s

claims involving products used outside the United States

is therefore denied.

iii. Claims Involving AMD Global Telemedicine

Finally, defendant contends that “any claims that

involve accused products that were manufactured and/or

sold by AMD Global Telemedicine [(AMD)] are precluded

as a matter of law.” ECF No. 47 at 44. This is so, according

to defendant, because plaintiff had previously filed a suit

against AMD and that case was dismissed with prejudice.

See id. Plaintiff responds that while this may be true, its

complaint “does not accuse [defendant] of using AMD

telemedicine systems.” ECF No. 51 at 44. According to

plaintiff, the accused systems “include some products”

that AMD also sells, but AMD neither manufactures

those products nor sells them to defendant or to the two

companies from which defendant bought the products at

issue. Id.

Defendant offers no more than bare assertions that

the accused products in this case are manufactured

by AMD and that AMD sold the products at issue to

defendant. See ECF No. 47 at 44. On its face, plaintiff’s

complaint involves only products manufactured or sold by

GlobalMed and Iron Bow Products. Without more, and

presuming all undisputed facts are true and construing

all reasonable inferences in plaintiff’s favor, see Scheuer,

416 U.S. at 236, the court agrees with plaintiff that “the

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Appendix C

products are properly accused in this action,” ECF No.

51 at 44. Defendant’s motion as to claims involving AMD

products must be denied.

Accordingly, the court has jurisdiction over all of

plaintiff’s claims.

B. Plaintiff’s Claims Must Be Dismissed for

Failure to State a Claim Upon Which Relief

Can Be Granted

Defendant argues that plaintiff’s complaint should

be dismissed in its entirety pursuant to RCFC 12(b)(6)

because plaintiff cannot state any claim since the patents

at issue are not entitled to patent protection under 35

U.S.C. § 101. See ECF No. 47 at 23-41. Plaintiff responds

that the asserted patents “are not directed to any patent

ineligible concepts, but rather are directed to non-abstract

telemedicine systems,” ECF No. 51 at 28 (capitalization

removed), and its claims require claim construction prior

to a decision on eligibility, see id. at 33.

Determining Patent Eligibility on a Motion

to Dismiss

“Patent eligibility under § 101 is a question of law that

may involve underlying questions of fact.” Simio, LLC v.

FlexSim Software Prods., Inc., 983 F.3d 1353, 1358-59

(Fed. Cir. 2020) (citing Interval Licensing LLC v. AOL,

Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018); see also Univ. of

Fla. Research Found., Inc. v. GE Co., 916 F.3d 1363, 1367

(Fed. Cir. 2019) (stating that “[e]ligibility is a question of

law based on underlying facts”). “[W]hether the claim

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Appendix C

‘supplies an inventive concept that renders [it] ‘significantly

more’ than an abstract idea to which it is directed is a

question of law.’” Simio, 983 F.3d at 1363 (quoting BSG

Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.

Cir. 2018)). And, “not every § 101 determination contains

genuine disputes over the underlying facts material to

the § 101 inquiry.”4 Berkheimer v. HP Inc., 881 F.3d 1360,

1368 (Fed. Cir. 2018). The court may, therefore, determine

patent eligibility on a motion to dismiss pursuant to RCFC

12(b)(6) only “when there are no factual allegations that,

taken as true, prevent resolving the eligibility question as

a matter of law.” Aatrix Software, Inc. v. Green Shades

Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018); see

also Univ. of Fla., 916 F.3d at 1369 (affirming dismissal

of infringement claims where patents were found to be

ineligible under § 101).

4. Plaintiff argues that defendant “failed to present clear

and convincing evidence sufficient to show the Asserted Paten[t]s

are ineligible for patent protection.” ECF No. 51 at 31. Plaintiff

also contends that the motion should be denied because “[f]actual

determinations will be needed to decide the eligibility issue.” Id.

The court notes that while plaintiff is correct that factual issues

related to a patent’s validity must be proven by clear and convincing

evidence, see Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir.

2018), the court does not resolve any factual disputes on a motion

to dismiss pursuant to Rule 12(b)(6) of the Rules of the United

States Court of Federal Claims. Instead, if a factual allegation

arises that, taken as true, would prevent the court from resolving

the eligibility determination, the court cannot, as a matter of law,

grant a motion to dismiss. Defendant, therefore, need not present

any clear and convincing evidence to the court at this stage of the

case. The court will, however, consider whether any factual issues

exist that may prevent the court from granting a motion to dismiss,

as required by the rules and the case law.

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Appendix C

ii.

Determining Patent-Eligible Subject

Matter

Section 101 of the Patent Act defines patent-eligible

subject matter as “any new and useful process, machine,

manufacture, or composition of matter, or any new and

useful improvement thereof.” 35 U.S.C. § 101. “‘Laws of

nature, natural phenomena, and abstract ideas,’” however,

are not eligible for patent protection. Alice Corp. Pty.

Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216, 134 S. Ct. 2347,

189 L. Ed. 2d 296 (2014) (quoting Ass’n for Molecular

Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589,

133 S. Ct. 2107, 186 L. Ed. 2d 124 (2013)). This is so

because these areas comprise “the basic tools of scientific

and technological work” and protecting them under the

patent system “might tend to impede innovation more

than it would tend to promote it, thereby thwarting the

primary object of the patent laws.” Id. (internal citations

and quotation marks omitted).

The Supreme Court of the United States has therefore

established a two-part test for evaluating claims for

patent-eligible subject matter. See id. at 217. First, the

court must “determine whether the claims at issue are

directed to one of those patent-ineligible concepts.” Id.

at 218 (citing Mayo Collaborative Servs. V. Prometheus

Lab’ys, Inc., 566 U.S. 66, 75-78, 132 S. Ct. 1289, 182

L. Ed. 2d 321 (2012)). The inquiry in this step “look[s] at

the ‘focus’ of the claims.” Elec. Power Grp., LLC v. Alstom

S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfish,

LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.

2016)). If the court concludes that the patents at issue

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Appendix C

are directed toward ineligible subject matter, then the

court must determine whether the application contains an

inventive concept. See Alice, 573 U.S. at 217. It does so by

“consider[ing] the elements of each claim both individually

and ‘as an ordered combination’ to determine whether the

additional elements ‘transform the nature of the claim’

into a patent-eligible application.” Alice, 573 U.S. at 217

(quoting Mayo, 566 U.S. at 78, 79).

iii. Plaintiff’s Claims Are Directed to an

Abstract Idea

The court must first consider the asserted patent

claims “‘in their entirety to ascertain whether their

character as a whole is directed to excluded subject

matter.’” ChargePoint, Inc. v. Semaconnect, Inc., 920

F.3d 759, 765 (Fed. Cir. 2019) (quoting Internet Patents

Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.

Cir. 2015)). The court “ask[s] what the patent asserts to

be the focus of the claimed advance over the prior art to

determine whether the claim’s character as a whole is

directed to ineligible subject matter.” Simio, 983 F.3d at

1359 (citations and quotation marks omitted).

Defendant contends that the asserted claims of

the ’343 Patent and the ’791 Patent are directed to the

“abstract idea of collecting, processing, and displaying

sound data from the human body,” and are therefore

ineligible for patent. ECF No. 47 at 23. Defendant asserts

that the abstract focus “is evident from the asserted

patents’ disclosures,” id. at 25, and “the language of the

asserted patent claims themselves,” id. at 26; see also id.

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Appendix C

at 26-28 (detailing the claims in plaintiff’s complaint that

defendant argues “further highlight[]” the abstract idea).

According to defendant, the data is “collected, processed,

and displayed using conventional hardware and software,”

making it “precisely the type of patent claim that the

Federal Circuit has consistently held to be directed to an

abstract idea.” Id. at 24; see also id. at 28-33 (arguing that

the specifications and prosecution histories of the patents

“concede” that they are “generic computer components

performing their conventional functions to carry out that

abstract idea”); id. at 34-35 (collecting cases in which the

Federal Circuit has found claims for collecting, analyzing,

and manipulating data and to be directed to an abstract

idea). And, defendant contends, plaintiff’s allegations

would result in exactly the sort of preemption that raised

the Supreme Court’s concern about the patenting of

abstract ideas. See id. at 33-34.

According to plaintiff, however, its patented system is

“directed to non-abstract telemedicine systems” for “use

in patient treatment and diagnosis,” and overcame “the

inability of [prior inventions] to provide accurate, robust,

flexible, easy-to-use and easy-to-modify systems.” ECF

No. 51 at 28 (capitalization removed). Plaintiff argues

that when comparing “traditional physical examination

by auscultation,”5 with plaintiff’s patented technology,

“the fallacy of [defendant’s] argument” that the patent is

directed at an abstract idea is “laid bare.” Id. at 29. Plaintiff

5. According to plaintiff, auscultation “is listening to the

sounds of the body during a physical examination” to evaluate

“frequency, intensity, duration, number [and] quality.” ECF No.

51 at 8 n.1 (capitalization removed).

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Appendix C

lists, in a table, the traditional physical examination

procedures and “examples of examination by auscultation”

using the system claimed in the asserted patents for each

of the terms “collecting,” “processing,” “analyzing,” and

“displaying.” Id. at 29-30 (capitalization removed). Plaintiff

further contends that “preemption is not an issue,”

because defendant “is misreading and misunderstanding

the asserted patents.” Id. at 35 (capitalization removed).

According to plaintiff, “[i]nfringement is limited to specific

accused devices in combination that meet all the claimed

limitations.” Id. at 36 (emphasis in original).

In a recent decision, the Federal Circuit addressed

patent allegations similar to those brought by plaintiff

here. See CardioNet, LLC v. InfoBionic, Inc., No. 20202123, 2020-2150, 2021 U.S. App. LEXIS 32392, 2021 WL

5024388, at *3-4 (Fed. Cir. Oct. 29, 2021). In CardioNet,

the Circuit reviewed a patent for a heart monitoring

device that filtered certain heart wave data to improve

monitoring. See id. at *1-2. Plaintiff argued that its

invention was directed to “an improvement in cardiac

monitoring technology,” rather than the abstract idea

of filtering data. See id. at *3. The Circuit disagreed,

holding that “the claim language and specification make

clear [that] the invention is directed to the abstract idea of

filtering patient heartbeat signals to increase accuracy.”

Id. at *4. In another similar case, the Circuit held that an

invention automating by computer the collection of data

from various health monitoring systems was “directed to

the abstract idea of collecting, analyzing, manipulating,

and displaying data.” Univ. of Fla., 916 F.3d at 1368.

41a

Appendix C

In the court’s view, at their core, plaintiff’s asserted

patents are directed to the abstract idea of collecting,

analyzing, and displaying data. As in CardioNet and

University of Florida, the invention at issue here is a

physical monitoring and data collection device that collects

and filters human physiological data and then displays

it for a clinician to review. See ECF No. 42 at 2-3; ECF

No. 42-5 at 50; ECF No. 42-7 at 48; see also CardioNet,

2021 U.S. App. LEXIS 32392, 2021 WL 5024388, at *34; Univ. of Fla., 916 F.3d at 1368. Plaintiff describes the

asserted patents as a “novel apparatus and system . . . for

collecting, processing, and recording sounds associated

with the physiologic activities of various human organs.”

ECF No. 42 at 2. And, the patents themselves describe

the invention as the “digital recording, processing and

analysis of . . . physiologic sounds.” ECF No. 42-5 at 50.

Plaintiff further claims that the advance over the

prior art is that the device collects data and “provid[es]

a simple interface which allows medical professionals

with limited technical background to easily manipulate

vital parameters . . . , and apply[] data windows without

the need for computer programming knowledge.” ECF

No. 42 at 6; ECF No. 42-5 at 50. Additionally, the ’343

Patent and the ’791 Patent claim to “boost the accuracy”

of the recorded physiological sounds by taking additional

measures to prevent extraneous sounds from influencing

the analysis of the physiological sounds collected. ECF

No. 42 at 10; see also ECF No. 42-5 at 50 (“Another object

of this invention is to boost the accuracy of recording

physiological sounds by providing the physician with an

42a

Appendix C

efficient method of eliminating background noise . . . from

the desired signal in real time.”).

The court thus agrees with defendant that the

patents describe a system that “collect[s], processe[s],

and display[s] [data] using conventional hardware and

software,” making it “precisely the type of patent claim

that the Federal Circuit has consistently held to be

directed to an abstract idea.” ECF No. 47 at 24; see

also CardioNet, 2021 U.S. App. LEXIS 32392, 2021 WL

5024388, at *3-4; Univ. of Fla., 916 F.3d at 1368. Reviewing

plaintiff’s allegations, along with the patents, plaintiff has

not articulated a clear description of its patents that would

permit the court to find otherwise. Plaintiff also does not

present, and the court cannot discern, any factual dispute

that prevents the court from making this determination.

Aatrix Software, 882 F.3d at 1125. The facts regarding the

“character as a whole” of the asserted patents are clear

and undisputed. ChargePoint, 920 F.3d at 765; see also,

e.g., ECF No. 42 at 2-3 (plaintiff describing the asserted

patents); ECF No. 47 at 16-19 (defendant describing the

asserted patents by quoting and citing to the patents

themselves). The court must find, therefore, as the Federal

Circuit did in CardioNet and University of Florida, that

plaintiff’s asserted patents are directed at the abstract

idea of “collecting, analyzing, manipulating, and displaying

data,” Univ. of Fla., 916 F.3d at 1368, and “filtering patient

[physical] signals to increase accuracy,” CardioNet, 2021

U.S. App. LEXIS 32392, 2021 WL 5024388, at *4.

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Appendix C

iv.

Plaintiff’s Claims Lack an Inventive

Concept

If the court finds that a patent is directed at ineligible

subject matter, the court next looks for an “inventive

concept,” defined as “an element or combination of

elements that is sufficient to ensure that the patent in

practice amounts to significantly more” than a patent on

the abstract idea itself. Alice, 573 U.S. at 217-18; see also

id. at 221 (noting that the “transformation into a patenteligible application requires more than simply stating the

abstract idea while adding the words ‘apply it’”) (internal

quotation marks and citation omitted); Mayo, 566 U.S.

at 82 (“[S]imply appending conventional steps, specified

at a high level of generality, to laws of nature, natural

phenomena, and abstract ideas cannot make those laws,

phenomena, and ideas patentable.”). Inventive concepts

“must be more than ‘well-understood, routine, conventional

activity.’” Affinity Labs of Texas, LLC v. DirecTV, LLC,

838 F.3d 1253, 1262 (Fed. Cir. 2016) (quoting Mayo, 566

U.S. at 79); see also Cellspin Soft, Inc. v. Fitbit, Inc., 927

F.3d 1306, 1316 (Fed. Cir. 2019) (“An inventive concept

reflects something more than the application of an abstract

idea using well-understood, routine, and conventional

activities previously known to the industry.”) (internal

quotation marks and citations omitted). “If a claim’s only

‘inventive concept’ is the application of an abstract idea

using conventional and well-understood techniques, the

claim has not been transformed into a patent-eligible

44a

Appendix C

application of an abstract idea.” BSG Tech, 899 F.3d at

1290-91.

Determining whether a claim contains an inventive

concept “may turn on underlying questions of fact.”

Cellspin, 927 F.3d at 1315 (internal quotation marks and

citation omitted). The court must accept plaintiff’s factual

allegations as true, and where plaintiff asserts “plausible

and specific factual allegations that aspects of the claim are

inventive,” those allegations are sufficient survive a motion

to dismiss. Id. at 1317. In Cellspin, the Circuit considered

plaintiff’s claim of inventiveness and determined that

plaintiff made “specific, plausible factual allegations”

that were “more than simply label[ing] . . . techniques

as inventive,” and “pointed to evidence suggesting these

techniques had not been implemented in a similar way.” Id.

at 1318. The court noted that “implementing a well-known

technique with particular devices in a specific combination

. . . can be inventive,” as plaintiff had specifically alleged

its particular implementation to be. Id. The Circuit thus

concluded that plaintiff had “sufficiently allege[d]” that it

had patented “significantly more” than an abstract idea.

Id. at 1319.

Defendant contends that the asserted claims lack

an inventive concept sufficient to transform them into

patent-eligible claims. See ECF No. 47 at 36-41. According

to defendant, plaintiff’s complaint recites “boilerplate

conclusory statements” that are insufficient to state a

45a

Appendix C

claim. Id. at 38 (quotation marks and citation omitted).

Defendant contends that the complaint “fails to identify

any technical improvement or inventive concept,” id.,

and instead identifies limitations that are “directed to

the abstract idea itself,” id. at 39 (emphasis in original),

and limitations that are “merely conventional computing

components performing their conventional functionality,”

id. at 40.

Plaintiff in turn asserts that it “makes specific,

plausible, factual allegations . . . about why aspects of its

claimed inventions recite inventive concepts.” ECF No.

51 at 37. According to plaintiff, at least three features of

its patent are inventive concepts: (1) the use of a parallel

to serial converter; (2) the conversion of physiological

sounds to electrical signals and then to digital signals;

and (3) the display device that permitted “easy operation,

customization and modification by the clinician.” Id. at 38.

Plaintiff asserts that defendant “ignores the facts cited in

the figures, specifications, claims, and prosecution history

of the Asserted Patents” and incorrectly assumes that if

a “claimed invention employs a ‘conventional’ computer

component” that fact “render[s] the entire combination of

claimed elements patent ineligible.” Id. at 39-40.

In the court’s view, plaintiff’s complaint does not

recite specific, plausible factual allegations “‘sufficient to

ensure that the patent in practice amounts to significantly

more’” than the abstract idea itself. Alice, 573 U.S. at

46a

Appendix C

217-18 (citing Mayo, 566 U.S. at 73); Cellspin, 927 F.3d at

1318 (citing Alice, 573 U.S. at 217-18). Plaintiff’s complaint

repeatedly states that the asserted patents “recite

technical improvements and inventive concepts that were

not well-understood, routine, or conventional” at the time

of the invention. ECF No. 42 at 6, 10, 16. This, however,

is a conclusory statement of the kind that the court is not

bound to accept as fact. See Am. Bankers Ass’n, 932 F.3d

at 1380 (the court is “not required to accept the asserted

legal conclusions” in a plaintiff’s complaint when assessing

a motion to dismiss). Although plaintiff’s statements are

followed by tables quoting claim terms and specifications,

see e.g., ECF No. 42 at 10-15, quoting or reciting the

claims and specifications without additional explanation

or “concrete allegations” does not constitute sufficiently

specific allegations for the court to find inventiveness,

Aatrix Software, 882 F.3d at 1128.

The court must and does make all inferences in

plaintiff’s favor, see Cary, 552 F.3d at 1376, however, the

court cannot infer an inventive concept without specific

allegations that are “more than simply label[ing] . . .

techniques as inventive,” Cellspin, 927 F.3d at 1318.

Plaintiff does not “point[] to evidence suggesting [its]

techniques had not been implemented in a similar way,” or

“in a specific combination” that would rise to the level of

inventiveness. Id.; see also, e.g., ECF No. 42 at 6-9 (quoting

claim terms and specifications without making specific

allegations), 10-15 (same), 16-26 (same). Plaintiff does not

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Appendix C

provide context that would demonstrate that its invention

is “significantly more” than an abstract idea, Alice, 573

U.S. at 218, or otherwise more than “the application of

conventional and well-understood techniques,” BSG Tech,

899 F.3d at 1290. Its complaint quotes the “disadvantages”

of the “technology field” that were listed in the patent,

ECF No. 42 at 4, without providing additional context

or explanation as to how plaintiff’s invention applied an

inventive concept to overcome the disadvantages. Id. at

4-5; see also Mayo, 566 U.S. at 82 (“[S]imply appending

conventional steps, specified at a high level of generality,

to laws of nature, natural phenomena, and abstract

ideas cannot make those laws, phenomena, and ideas

patentable.”).

Likewise, in its response, plaintiff states that it

alleged inventive concepts were not “generic, conventional

computing component[s],” w ithout elaborating or

otherwise pointing to facts alleged in the complaint that

support that assertion. ECF No. 51 at 38; see also id. at 3940. Without more, the court cannot find that plaintiff has

adequately alleged an inventive concept. See BSG Tech,

899 F.3d at 1290-91 (“If a claim’s only ‘inventive concept’

is the application of an abstract idea using conventional

and well-understood techniques, the claim has not been

transformed into a patent-eligible application of an

abstract idea.”).

The court thus finds that plaintiff’s asserted patents

are directed to ineligible subject matter. See 35 U.S.C.

48a

Appendix C

§ 101; Alice, 573 U.S. at 216. As such, plaintiff has failed to

state a claim upon which relief can be granted. See Aatrix

Software, 882 F.3d at 1125; Univ. of Fla., 916 F.3d at 1369.

IV. Conclusion

Although defendant’s motion was made on the basis

of both RCFC 12(b)(1) and 12(b)(6), the court has found

that it has subject-matter jurisdiction over all of plaintiff’s

claims and thus dismisses plaintiff’s complaint on the basis

of RCFC 12(b)(6) alone.

Accordingly, for the foregoing reasons:

(1) Defendant’s motion to dismiss, ECF No. 47, is

GRANTED; and

(2) The clerk’s office is directed to ENTER final

judgment in defendant’s favor, and DISMISS

plaintiff’s second amended complaint, ECF No.

42, with prejudice.

IT IS SO ORDERED.

s/Patricia E. Campbell-Smith

PATRICIA E. CAMPBELL-SMITH

Judge

49a

Appendix

D UNITED STATES

APPENDIX D — ORDER

OF THE

COURT OF APPEALS FOR THE FEDERAL

CIRCUIT, FILED AUGUST 28, 2024

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2023-1096

AUDIO EVOLUTION DIAGNOSTICS, INC.,

Plaintiff-Appellant,

UNITED STATES, GLOBALMEDIA GROUP, LLC,

Defendants-Appellees.

Appeal from the United States Court of Federal

Claims in No. 1:20-cv-01384-PEC, Judge Patricia E.

Campbell-Smith.

ON PETITION FOR PANEL REHEARING AND

REHEARING EN BANC

Before Moore, Chief Judge, Lourie, Dyk,

Prost, Reyna, Taranto, Chen, Hughes, Stoll,

Cunningham, and Stark, Circuit Judges.1

Per Curiam.

Filed August 28, 2024

1. Circuit Judge Newman did not participate.

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Appendix D

ORDER

Audio Evolution Diagnostics, Inc. filed a combined

petition for panel rehearing and rehearing en banc. The

petition was referred to the panel that heard the appeal,

and thereafter the petition was referred to the circuit

judges who are in regular active service.

Upon consideration thereof,

It Is Ordered That:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue September 4, 2024.

August 28, 2024

Date

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.