In Zircore, LLC v. Straumann Manufacturing, Inc. (E.D. Tex. 2017), as in many patent litigations since Mayo, Myriad, and Alice, the defendant moved to dismiss the infringement allegations contending that the patents in suit are ineligible subject matter under 35 USC § 101. Here, despite Straumann’s assertion that Zircore’s U.S. Patent No. 7,967,606 was invalid under § 101 as directed to an abstract idea, the court found that the claims were patent eligible under § 101 as directed to a method of manufacturing a physical object.
Claim 1 of the ’606 patent is representative:
1. A method of manufacturing custom crown copings and infrastructures comprising the steps of:
preparing a three-dimensional model of a patient's mouth;
fitting an implant abutment insert into the model;
storing data about the implant abutment insert standard size and shape in a file;
scanning the model while the implant abutment insert is in the model;
utilizing the implant abutment insert size data and data from said scanning step to determine and design a core to fit over the insert and at the same time determine and design a coping to fit over the core; and
manufacturing said core and said coping.
The defendant reductionistically characterized the claims as being directed to “the abstract idea of designing two components at the same time.” The court disagreed, citing Enfish and noting that the claim language is directed to manufacturing a physical object, namely physical crown copings for prosthodontics. (“[D]escribing the claims at … a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).) The court acknowledged that “the claims, at least on their face, appear to include certain steps that could be construed as computerized steps … that could arguably be carried out mentally,” but concluded that the “context of the patent as a whole suggests that the invention is rooted in the physical world” and that there was no authority for the proposition that including mental steps makes a physical process “abstract.”
Zircore v. Straumann joins a growing list of recent cases finding inventions patent eligible, and not “directed to” an abstract idea. We’ve posted recently on a number of 35 USC § 101 decisions and the United States Patent and Trademark Office’s related guidance here. Please stay tuned to IPLawBulletin.com for further insight and analysis as the 35 USC § 101 landscape continues evolving.
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