Scanning System For Generating a Prosthesis Model Not Invalid Under § 101

Takeaway:  In denying a motion to dismiss, a district court in the SD of TX found the claimed subject matter was not directed to an abstract idea.  While the court did find that the claimed subject matter employed "software to process images and perform 3D modeling," the court also found that the claimed subject matter did involve substantial tangible components that included generating models to create a breast prosthetic as well as the use of "alignment markers placed on the breast and captured in the image to aid in computer modeling" such that the claimed subject matter was not an abstract idea. ContourMed Inc. v. American Breast Care LP, 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.)

Details:  ContourMed Inc. (the plaintiff) owned U.S. Patent No. 7,058,439 (the "'439 Patent") and sued American Breast Care L.P. (the defendant) for patent infringement in the Southern District of Texas. The defendant moved to dismiss the lawsuit asserting that the '439 Patent claimed ineligible subject matter directed to the abstract idea of generic computer for modeling data collected from a generic scanner. The plaintiff countered that the scanning system was not generic, and that even if the court considered the patent as directed to an abstract idea, "the use of novel, non-abstract components transforms the invention into patent-eligible subject matter." The district recently denied this motion to dismiss by finding that the claimed subject matter was directed to patent-eligible subject matter.

Claim 1 of the '439 Patent recites:

     1.  A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising:
     providing a scanning system comprising one or more imaging devices and one or more alignment markers, wherein at least one of the alignment markers comprises a tangible object, wherein the tangible object is noticeable in a scanned image and may be used to manipulate a scanned image as a reference point;
     arranging at least one of the alignment markers in the middle of the body of the patient and within the field of view of at least one of the imaging devices;
     determining a first set of data elements using the scanning system is based on a shape of the patient's intact breast;
     determining a first computer model of the intact breast based on the first set of data elements;
     using at least one of the alignment markers in the middle of the body of the patient as a fixed reference point relative to the patient to determine alignment of the first computer model of the intact breast;
     applying a reflection transformation to the first computer model of the intact breast to form a second computer model, the second computer model comprising a second set of data points that represents a mirror image of the first computer model;
     determining a third set of data elements using the scanning system based on a surgical site at which the breast was at least partially removed;
     determining a third computer model based on the third set of data elements; and
     combining the third computer model and the second computer model to form a breast prosthesis model,
     wherein the second computer model defines an anterior portion of the breast prosthesis model that mirrors the intact breast and the third computer model defines a posterior portion of the breast prosthesis model that is custom fit to the surgical site.

The court began its analysis of whether the claims at issue were directed to an abstract idea (Mayo Step 1). In its analysis, the court found that the claims at issue differed from Alice and Bilski because the claims were not directed to a "building block of the modern economy."

The court then distinguished the other cases cited by the defendant as lacking "physical components, merely beginning with data collection and ending with data storage." The court reasoned that "[w]hile the process claimed in the '439 Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components." More specifically, the claims at issue were directed to imaging a breast for the "ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in computer modeling."

The court did note that caution should be used against the approach that focuses only on physical or tangible results since this type of analysis "inappropriately focuses on the result of the claimed invention rather than the invention itself." However, the court still found that the claims were not directed to an abstract idea because "the concept of the invention involves substantially more than mere data collection and storage and does not threaten to pre-empt the use of scanners and computer modeling in other fields."

Based upon this analysis, the court did not move to Mayo Step 2 to determine whether the claims included an "inventive concept."

In some ways, this decision feels like the outcome was a result of the claims producing "a useful, concrete and tangible result."