Judge Albright Grants Motion To Dismiss AI Patent Claims On ' 101 Grounds

• Published date: 14 January 2022
• Subject Matter: Intellectual Property, Food, Drugs, Healthcare, Life Sciences, Patent
• Law Firm: Winston & Strawn LLP
• Author: Ms Gianna Santoro and Kelly Hunsaker

In Health Discovery Corp. v. Intel Corp., Judge Alan Albright granted, in part, Intel's motion to dismiss infringement claims of AI machine-learning patents on ' 101 grounds. The court did so without prejudice, however, noting the difference between 'failing to plead adequate facts addressing the analytical steps called for in Alice' and proving ineligibility by clear and convincing evidence.

Health Discovery Corp. (Health Discovery) accused Intel of infringing its patented machine-learning method of generating datasets using support vector machines (SVM) and recursive feature elimination (RFE). Intel filed a 12(b)(6) motion to dismiss, arguing patent ineligibility under ' 101. In an opinion lamenting the difficulty of applying ' 101 jurisprudence consistently and coherently, the court applied the two-step framework for determining patent eligibility as established by the Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).

Under step one of Alice, the court assessed whether the claims are directed to an abstract idea. At the outset, the court discussed the difficulty of reconciling the Federal Circuit's jurisprudence on Alice step one and extensively reviewed recent relevant Federal Circuit cases'In re Board of Trustees of Leland Stanford Junior University, 991 F.3d 1245 (Fed. Cir. 2021) (Stanford II); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018); CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020); and Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019). If only Koninklijke and CardioNet applied, the court observed that the claims would pass Alice step one. However, the inconsistency in ' 101 jurisprudence required the court to look to cases on patents most similar to the patents at issue. The court, therefore, relied on SAP and Stanford II in its analysis because they analyzed patents most similar to those at issue here.

The Health Discovery patents' written descriptions describe a way of improving a mathematical analysis, which the court found analogous to the claims in Stanford II and SAP. In those cases, the generated patents improved data when compared to previous methods. But the Federal Circuit found these patents to be a mere improvement to the abstract idea of data analysis and calculation. In this case, the court observed that the patent uses SVM‑RFE to rank and eliminate features within datasets, which is not the conventional industry method. While this...