United States Court of Appeals 

for the Federal Circuit ______________________

CARDIONET, LLC, BRAEMAR MANUFACTURING, 

LLC,

Plaintiffs-Appellants

v.

INFOBIONIC, INC,

Defendant-Appellee

______________________

2019-1149

______________________

Appeal from the United States District Court for the 

District of Massachusetts in No. 1:17-cv-10445-IT, Judge 

Indira Talwani.

______________________

Decided: April 17, 2020 

______________________

CHING-LEE FUKUDA, Sidley Austin LLP, New York, NY, 

argued for plaintiffs-appellants. Also represented by 

BRADFORD J. BADKE, TODD MATTHEW SIMPSON; NATHAN A.

GREENBLATT, Palo Alto, CA. 

 GABRIEL BELL, Latham & Watkins LLP, Washington, 

DC, argued for defendant-appellee. Also represented by 

MAXIMILIAN A. GRANT; CHARLES SANDERS, Boston, MA. 

 ______________________

Before DYK, PLAGER, and STOLL, Circuit Judges.

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2 CARDIONET, LLC v. INFOBIONIC, INC

Opinion for the court filed by Circuit Judge STOLL.

Opinion dissenting in part and concurring in the result

filed by Circuit Judge DYK.

STOLL, Circuit Judge.

CardioNet, LLC and Braemar Manufacturing, LLC 

(collectively, “CardioNet”) appeal the district court’s dismissal of their patent infringement complaint against InfoBionic, Inc. The district court held that the asserted 

claims of CardioNet’s U.S. Patent No. 7,941,207 are ineligible under 35 U.S.C. § 101, and therefore the complaint 

failed to state a claim under Federal Rule of Civil Procedure 12(b)(6). We conclude instead that the asserted 

claims of the ’207 patent are directed to a patent-eligible 

improvement to cardiac monitoring technology and are not 

directed to an abstract idea. Accordingly, we reverse the 

district court and remand for further proceedings. 

BACKGROUND

I

Anomalies in the electrical activity of a patient’s heart

can indicate the presence of certain physiological conditions ranging from benign to life-threatening. Among those

conditions are various different types of cardiac arrythmias

(abnormal heart rhythms), including atrial fibrillation, 

atrial flutter, normal sinus rhythm irregularity, irregularity from various types of heart blocks, irregularity associated with premature ventricular contractions, and 

ventricular tachycardia. 

Atrial fibrillation and atrial flutter involve “the loss of 

synchrony between the atria and the ventricles” of the 

heart. ’207 patent col. 1 ll. 24–25, 34–35. A patient may 

experience “short” or “sustained” episodes of atrial fibrillation or atrial flutter. Short episodes “generally include between two and 20 [heart]beats and may or may not have 

clinical significan[ce].” Id. at col. 5 ll. 33–35. By contrast,

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sustained episodes “generally include more than 20 beats 

and may have relatively greater clinical significance.” Id.

at col. 5 ll. 35–37. Atrial fibrillation “can lead to irregular 

ventricular beating as well as blood stagnation and clotting 

in the atria.” Id. at col. 1 ll. 27–28. Both atrial fibrillation 

and atrial flutter are “associated with stroke, congestive 

heart failure, and cardiomyopathy.” Id. at col. 1 ll. 31–32, 

40–42. 

Ventricular tachycardia, or V-TACH, is another form of 

cardiac arrythmia and is characterized by “a rapid succession of ventricular contractions (e.g., between 140 and 220 

per minute) generally caused by an abnormal focus of electrical activity in a ventricle.” Id. at col. 9 ll. 41–44. Ventricular beats “are irregular beats that interrupt the 

normal heart rhythm” and that “may be precipitated by 

factors such as alcohol, tobacco, caffeine, and stress.” Id. 

at col. 9 ll. 10–12, 19–20. The “occurrence of ventricular 

beats can be used to identify ventricular tachycardia (e.g., 

when there are three or more consecutive ventricular 

beats).” Id. at col. 9 ll. 16–19. V-TACH “can last from a 

few seconds to several days and can be caused by serious 

heart conditions such as a myocardial infarction.” Id. 

at col. 9 ll. 44–46. 

The ’207 patent is titled “Cardiac Monitoring” and 

claims priority to an application filed on January 21, 2004. 

The ’207 patent describes cardiac monitoring systems and 

techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac 

arrythmia. Electrical signals of the heart can be measured 

by placing electrodes on a patient’s skin. Id. at col. 1 ll. 17–

20, col. 5 ll. 1–7. The patent teaches that its systems and 

techniques determine the beat-to-beat variability in heart 

rate over a series of successive heartbeats. Specifically, 

they determine the variability in heart rate “over a series 

of between 20 and 200 of the recent R to R intervals,” or the 

timing between “R-waves.” Id. at col. 2 ll. 4–6, 47–49. An

R-wave is the peak of what is referred to as the “QRS 

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complex” of an electrocardiogram signal, as illustrated in 

Figure 2 below. The QRS complexes (items 215, 220, and 

225 of Figure 2) of the signal correspond to the contractions

of the ventricles. Id. at col. 4 ll. 53–58.

Id. Fig. 2. A schematic of the ’207 patent’s cardiac monitoring system is shown below in Figure 8: 

Id. Fig. 8. The written description explains that in detecting atrial fibrillation and atrial flutter, the systems and 

techniques include accounting for the presence of irregular 

ventricular beats, which are “negatively indicative” of 

atrial fibrillation and atrial flutter. Id. at col. 1 ll. 61–65, 

col. 2 ll. 53–61. The patent recognizes that the “occurrence 

of ventricular beats is generally unrelated to” atrial 

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fibrillation and atrial flutter, whereas it is indicative of VTACH. Id. at col. 9 ll. 15–19. The patent’s systems and 

techniques also analyze information regarding the time period between ventricular contractions (i.e., the R to R interval) to detect atrial fibrillation and atrial flutter using nonlinear statistical approaches. Id. at col. 1 ll. 49–54, col. 5 

ll. 40–44. Figure 10 depicts an embodiment of the ’207 patent’s system employing these techniques:

Id. Fig. 10. 

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Claims 1–3, 7, 10–12, and 22 are at issue on appeal. 

The claims are drawn to a device for detecting and reporting the presence of atrial fibrillation or atrial flutter in a 

patient. Specifically, the device detects beat-to-beat timing 

of cardiac activity, detects premature ventricular beats (irregular beats that interrupt the normal heart rhythm),1

and determines the relevance of the beat-to-beat timing to 

atrial fibrillation or atrial flutter, taking into account the 

variability in the beat-to-beat timing caused by premature 

ventricular beats. 

Independent claim 1 recites:

1. A device, comprising:

a beat detector to identify a beat-to-beat timing of 

cardiac activity;

a ventricular beat detector to identify ventricular 

beats in the cardiac activity;

variability determination logic to determine a variability in the beat-to-beat timing of a collection of 

beats;

relevance determination logic to identify a relevance of the variability in the beat-to-beat timing 

to at least one of atrial fibrillation and atrial flutter; and

an event generator to generate an event when the 

variability in the beat-to-beat timing is identified 

as relevant to the at least one of atrial fibrillation 

1 For purposes of the motion to dismiss, the district 

court adopted CardioNet’s construction of the term “ventricular beats” to mean “premature ventricular beats that 

are irregular beats that interrupt the normal heart 

rhythm.” CardioNet, LLC v. InfoBionic, Inc., 348 F. Supp. 

3d 87, 96 n.4 (D. Mass. 2018) (citation omitted).

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and atrial flutter in light of the variability in the 

beat-to-beat timing caused by ventricular beats 

identified by the ventricular beat detector. 

Id. at col. 12 ll. 12–27. 

Dependent claims 2, 3, 7, and 10–12 depend from 

claim 1 and further define the features of the device or its 

operation:

2. The device of claim 1, wherein the relevance determination logic is to accommodate variability in 

the beat-to-beat timing caused by ventricular beats 

by weighting ventricular beats as being negatively 

indicative of the one of atrial fibrillation and atrial 

flutter.

3. The device of claim 1, wherein the variability

determination logic is to compare times between Rwaves in three successive QRS complexes to determine the variability in the beat-to-beat timing.

***

7. The device of claim 1, wherein the event generator is to generate an event by performing operations comprising: collecting data associated with 

the collection of beats; and transmitting the data 

associated with the collection of beats to a remote 

receiver.

***

10. The device of claim 1, wherein the relevance determination logic comprises logic to identify the relevance of the variability using a non-linear 

function of a beat-to-beat interval.

11. The device of claim 1, wherein the beat detector 

comprises a QRS detector.

12. The device of claim 1, further comprising a sensor that includes two or more body surface 

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electrodes subject to one or more potential differences related to cardiac activity.

Id. at col. 12 ll. 28–36, 52–56, col. 13 ll. 5–13. 

Similar to claim 2, dependent claim 22 recites 

“weighting” ventricular beats as being negatively indicative of atrial fibrillation or atrial flutter:

22. The article of claim 20,2 determining the relevance comprises: identifying a beat of the collection 

as a ventricular beat, and weighting the beat as being negatively indicative of the one of atrial fibrillation and atrial flutter. 

Id. at col. 14 ll. 39–43. 

The ’207 patent describes a number of advantages 

achieved by the claimed cardiac monitoring device. For instance, by analyzing the beat-to-beat timing for atrial fibrillation or atrial flutter while also taking into account the 

2 Claim 20 recites: 

An article comprising one or more machine-readable media storing instructions operable to cause 

one or more machines to perform operations, the 

operations comprising: determining a beat-to-beat 

variability in cardiac electrical activity; determining a relevance of the variability over a collection of 

beats to one of atrial fibrillation and atrial flutter 

using a non-linear function of a beat-to-beat interval; and identifying one of an atrial fibrillation 

event and an atrial flutter event based on the determined relevance, the event being a period in 

time when the information content of the cardiac

electrical activity is of increased relevance to the 

one of atrial fibrillation and atrial flutter. 

Id. at col. 14 ll. 12–24. 

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variability in the beat-to-beat timing caused by premature 

ventricular beats, the device can more accurately distinguish atrial fibrillation and atrial flutter from other types 

of arrythmias and has “improved positive predictability” of 

atrial fibrillation and atrial flutter. Id. at col. 3 ll. 6–16. 

The written description states that when the device was 

used to analyze the MIT-BIH arrhythmia database in 

Cambridge, Massachusetts, “a sensitivity to [these two arrhythmias] in excess of 90% and a positive predictivity in 

excess of 96% were obtained.” Id. at col. 3 ll. 21–26. In 

other words, the device reports few false negatives and 

false positives when used to detect atrial fibrillation or

atrial flutter. In addition, the device is able to identify 

“sustained” episodes of atrial fibrillation and atrial flutter, 

which have “increased clinical significance” compared to 

“short” episodes. Id. at col. 3 ll. 16–20. Moreover, the device is “well-adapted to monitoring cardiac signals of ambulatory patients who are away from controlled 

environments such as hospital beds or treatment facilities,” and whose cardiac signals “may be noisier and otherwise strongly impacted by the patients’ heightened levels 

of activity.” Id. at col. 3 ll. 27–34. The device is also “welladapted to real-time monitoring of arrhythmia patients, 

where minimal delays in distinguishing between different 

types of cardiac arrhythmia can speed the delivery of any 

urgent medical care.” Id. at col. 3 ll. 35–39. Lastly, the 

device is advantageous in that it “require[s] minimal computational resources” and “do[es] not require training before different types of cardiac arrhythmia can be 

distinguished.” Id. at col. 3 ll. 39–43. 

II

InfoBionic filed a motion to dismiss for failure to state 

a claim pursuant to Rule 12(b)(6), arguing that the asserted claims are directed to patent-ineligible subject matter under § 101. The district court determined that the 

’207 patent claims are ineligible under § 101, applying the 

Supreme Court’s two-step framework for determining 

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patent eligibility. See Alice Corp. v. CLS Bank Int’l, 

573 U.S. 208 (2014). 

At step one, the district court concluded that the claims

are directed to the abstract idea that atrial fibrillation and 

atrial flutter “can be distinguished by focusing on the variability of the irregular heartbeat.” CardioNet, LLC v. InfoBionic, Inc., 348 F. Supp. 3d 87, 93 (D. Mass. 2018) (District 

Court Op.); see also id. at 97 (further defining the abstract 

idea as “identifying” atrial fibrillation or atrial flutter “by 

looking at the variability in time between heartbeats and 

taking into account ventricular beats”). The district court 

rejected CardioNet’s argument that the claimed invention

“represents an improvement to the function of cardiac monitoring devices,” including “more accurate and clinically 

significant” detection of atrial fibrillation and atrial flutter.

Id. at 93 (citation omitted). The district court concluded

that although the “idea of using a machine to monitor and 

analyze heart beat variability and interfering beats so as 

to alert the user of potential [atrial fibrillation or atrial 

flutter] events may well improve the field of cardiac telemetry,” CardioNet “d[id] not identify improvements to any 

particular computerized technology.” Id.

CardioNet appeals. We have jurisdiction pursuant to 

28 U.S.C. § 1295(a)(1).

DISCUSSION

We apply regional circuit law when reviewing the district court’s dismissal of a complaint for failure to state a 

claim. Athena Diagnostics, Inc. v. Mayo Collaborative 

Servs., LLC, 915 F.3d 743, 749 (Fed. Cir. 2019). The First 

Circuit reviews such dismissals de novo, accepting as true

all well-pleaded facts alleged in the complaint and drawing 

all reasonable inferences in favor of the non-moving party. 

In re Loestrin 24 Fe Antitrust Litig., 814 F.3d 538, 549 

(1st Cir. 2016). Patent eligibility under § 101 is a question 

of law that may contain underlying issues of fact. See 

Aatrix Software, Inc. v. Green Shades Software, Inc., 

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882 F.3d 1121, 1125 (Fed. Cir. 2018); Berkheimer v. HP 

Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). We review de 

novo a determination that a claim is directed to patent-ineligible subject matter. Berkheimer, 881 F.3d at 1365. 

I

Section 101 provides that “[w]hoever 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.” 35 U.S.C. § 101. 

The Supreme Court has identified three types of subject 

matter that are not patent-eligible: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 573 U.S. at 216 (quoting Ass’n for Molecular Pathology 

v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). 

In Alice, the Supreme Court articulated a two-step test 

for examining patent eligibility when a patent claim is alleged to involve one of these three types of subject matter. 

The “abstract ideas” category, the subject matter at issue 

in this case, embodies “the longstanding rule that ‘[a]n idea 

of itself is not patentable.’” Id. at 218 (alteration in original) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 

The Supreme Court recognized, however, that “[a]t some 

level, ‘all inventions . . . embody, use, reflect, rest upon, or 

apply laws of nature, natural phenomena, or abstract 

ideas.’” Id. at 217 (alteration in original) (quoting Mayo 

Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 

71 (2012)). “Thus, an invention is not rendered ineligible 

for patent simply because it involves an abstract concept.”

Id. Rather, “applications” of abstract concepts “to a new 

and useful end . . . remain eligible for patent protection.” 

Id. (quoting Benson, 409 U.S. at 67). 

At step one, we consider the claims “in their entirety to 

ascertain whether their character as a whole is directed to 

excluded subject matter.” McRO, Inc. v. Bandai Namco 

Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 

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1343, 1346 (Fed. Cir. 2015)); see also Elec. Power Grp., LLC 

v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[W]e 

have described the first-stage inquiry as looking at the ‘focus’ of the claims, their ‘character as a whole.’” (citations 

omitted)). We also consider the patent’s written description, as it informs our understanding of the claims. See 

Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 

1341, 1346 (Fed. Cir. 2019) (“[T]he specification [is] helpful 

in illuminating what a claim is ‘directed to.’” (alterations in 

original) (citation omitted)). “If the claims are not directed 

to a patent-ineligible concept under Alice step 1, ‘the claims

satisfy § 101 and we need not proceed to the second step.’” 

Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007

(Fed. Cir. 2018) (quoting Core Wireless Licensing S.A.R.L. 

v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018)). 

“If the claims are directed to a patent-ineligible concept, however, we next consider Alice step two.” Id. In this 

step, we consider “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). This 

second step is “a search for an ‘inventive concept’—i.e., an 

element or combination of elements thatis ‘sufficient to ensure that the patent in practice amounts to significantly 

more than a patent upon the [ineligible concept] itself.’” Id. 

at 217–18 (alteration in original) (quoting Mayo, 566 U.S.

at 72–73).

II

We begin our analysis with Alice step one. In doing so, 

we look to whether the claims “focus on a specific means or 

method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract 

idea and merely invoke generic processes and machinery.” McRO, 837 F.3d at 1314 (citations omitted). We hold 

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that the asserted claims of the ’207 patent are directed to 

patent-eligible subject matter.

A

When read as a whole, and in light of the written description, we conclude that claim 1 of the ’207 patent is directed to an improved cardiac monitoring device and not to 

an abstract idea. In particular, the language of claim 1 indicates that it is directed to a device that detects beat-tobeat timing of cardiac activity, detects premature ventricular beats, and determines the relevance of the beat-tobeat timing to atrial fibrillation or atrial flutter, taking into 

account the variability in the beat-to-beat timing caused by 

premature ventricular beats identified by the device’s ventricular beat detector. In our view, the claims “focus on a 

specific means or method that improves” cardiac monitoring technology; they are not “directed to a result or effect 

that itself is the abstract idea and merely invoke generic 

processes and machinery.” McRO, 837 F.3d at 1314 (citations omitted).

The written description confirms our conclusion. It explains that, by identifying “variability in the beat-to-beat 

timing . . . as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beatto-beat timing caused by ventricular beats identified by the 

ventricular beat detector,” the claimed invention achieves 

multiple technological improvements. First and foremost, 

the device more accurately detects the occurrence of atrial 

fibrillation and atrial flutter—as distinct from V-TACH 

and other arrhythmias—and allows for more reliable and 

immediate treatment of these two medical conditions. 

’207 patent col. 3 ll. 6–16, 21–26, 35–39. Indeed, the written description reports that when analyzing real-world arrythmia data, the device demonstrated both high “positive 

predictivity” of, and high “sensitivity” to, atrial fibrillation 

and atrial flutter, meaning that it effectively avoids false 

positives and false negatives, respectively, in detecting

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these two conditions. Id. at col. 3 ll. 21–26. In addition, 

the device is able to identify sustained episodes of atrial 

fibrillation and atrial flutter that have “increased clinical 

significance.” Id. at col. 3 ll. 16–20. 

The dependent claims are similarly directed to patenteligible subject matter, as they further specify the physical 

features or operation of the device of claim 1. For instance, 

claim 2 additionally requires “weighting” ventricular beats 

“as being negatively indicative of the one of atrial fibrillation and atrial flutter.” Claim 22, which depends from independent claim 20, recites a similar limitation. Claim 3 

is additionally directed to “compar[ing] times between Rwaves in three successive QRS complexes to determine the 

variability in the beat-to-beat timing.” Claim 7 is additionally directed to “transmitting the data associated with the 

collection of beats to a remote receiver.” Claim 10 additionally requires “using a non-linear function of a beat-to-beat 

interval.” Claim 11 is additionally directed to the use of a 

“QRS detector.” Finally, claim 12 is additionally directed 

to using “a sensor that includes two or more body surface 

electrodes subject to one or more potential differences related to cardiac activity.” Thus, each of these dependent 

claims narrows the device’s specific technical features or 

operations.

We agree with CardioNet that the claims of the ’207 patent are akin to claims we have previously determined are

directed to technological improvements. For instance, the 

asserted claims are similar to those we held eligible in Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 

2017). There, the claims recited a “computer memory system” that used “programmable operational characteristics” 

of a computer’s cache memory based on the type of processor connected to the memory system. Id. at 1257. On appeal from a dismissal under Rule 12(b)(6), we held under 

Alice step one that the claims were “directed to an improved computer memory system, not to the abstract idea 

of categorical data storage.” Id. at 1259. Important to our 

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determination was the fact that the written description described technical “advantages offered by” the claimed 

memory system. Id. at 1259–60. In particular, the written 

description explained that the claimed system was able to 

accommodate “different types of processors . . . without significantly compromising their individual performance” and 

“outperform[ed] a prior art memory system . . . armed with 

‘a cache many times larger than the cumulative size of the 

subject caches.’” Id. at 1259 (citations omitted). Weighing 

“all factual inferences drawn from the specification . . . in 

favor of Visual Memory, the non-moving party,” we reversed the district court’s decision that the claims were ineligible. Id. at 1262. 

Similarly, here, the ’207 patent’s written description 

identifies a number of advantages gained by the elements 

recited in the claimed cardiac monitoring device. By analyzing the “variability in the beat-to-beat timing” for “atrial 

fibrillation and atrial flutter in light of the variability in 

the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector,” the claimed invention more accurately detects the occurrence of atrial 

fibrillation and atrial flutter, as distinct from V-TACH and 

other arrhythmias. ’207 patent col. 3 ll. 6–16, 21–26, 35–

39. We accept those statements as true and consider them 

important in our determination that the claims are drawn 

to a technological improvement. 

The ’207 patent claims are also similar to those we held 

eligible in McRO. The patent at issue in McRO claimed a 

“method for automatically animating lip synchronization 

and facial expression of three-dimensional characters.” 

837 F.3d at 1307. We reversed the district court’s grant of 

judgment on the pleadings under Federal Rule of Civil Procedure 12(c) that the claims were directed to an abstract 

idea. We held under Alice step one that the claims were

directed to “a specific asserted improvement in computer 

animation, i.e., the automatic use of rules of a particular 

type.” Id. at 1314. The written description confirmed that 

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the “claimed improvement” was “allowing computers to 

produce accurate and realistic lip synchronization and facial expressions in animated characters that previously 

could only be produced by human animators.” Id. at 1313

(internal quotation marks and citation omitted). We rejected the argument that the claims “simply use a computer as a tool to automate conventional activity” because 

there was no evidence in the record that “the process previously used by animators [wa]s the same as the process 

required by the claims.” Id. at 1314. The specification 

made “no suggestion that animators were previously employing the type of rules required by” the claims. Id. In 

fact, the evidence in the record showed that the traditional 

process and claimed method produced realistic animations 

of facial movements in fundamentally different ways. Id.

In this case, there is likewise no suggestion in the 

’207 patent’s written description that doctors were “previously employing” the techniques performed on the claimed 

device. Nothing in the record in this case suggests that the 

claims merely computerize pre-existing techniques for diagnosing atrial fibrillation and atrial flutter. Moreover, as 

in McRO, the written description of the ’207 patent confirms that the asserted claims are directed to a specific 

technological improvement—an improved medical device 

that achieves speedier, more accurate, and clinically significant detection of two specific medical conditions out of a 

host of possible heart conditions.

B

At the heart of the district court’s erroneous step one 

analysis is the incorrect assumption that the claims are directed to automating known techniques. See District Court 

Op., 348 F. Supp. 3d at 93. InfoBionic reiterates this argument on appeal, asserting that “the claims are drawn to 

automating basic diagnostic processes that doctors have 

long used.” Appellee’s Br. 2; see also id. at 11 (“The claims

recite the basic steps that any doctor could (and would) 

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perform to make such diagnoses—collecting and analyzing 

a patient’s heartbeat data.”); id. at 12 (“[T]he claims use 

computers as mere tools to automate basic human steps.”); 

id. at 20 (“[C]laim 1 is nothing more than a computerized 

version of a doctor’s approach to diagnosis.”). But the written description does not disclose that doctors performed the 

same techniques as the claimed device in diagnosing atrial 

fibrillation or atrial flutter. Indeed, as discussed above, 

nothing in the record supports the district court’s fact finding (and InfoBionic’s assertion) that doctors long used the 

claimed diagnostic processes. The district court’s assumption also seems incongruous with the claimed subject matter. For example, it is difficult to fathom how doctors

mentally or manually used “logic to identify the relevance 

of the variability [in the beat-to-beat timing] using a nonlinear function of a beat-to-beat interval” as required by 

claim 10. For all these reasons, the district court erred by 

holding that the claims are abstract based on this erroneous finding.

Likewise, the district court erred by disregarding the 

written description’s recitation of the advantages of the 

claimed invention. In opposing InfoBionic’s motion, CardioNet had argued that, based on the patent’s disclosure, the 

claimed invention “achieve[s] more accurate and clinically 

significant” detection of atrial fibrillation and atrial flutter, 

and thereby constitutes an improvement to cardiac monitoring technology as opposed to an abstract idea. District 

Court Op., 348 F. Supp. 3d at 93 (citation omitted). The 

district court dismissed this argument, concluding that 

CardioNet did “not identify improvements to any particular computerized technology.” Id. On a motion to dismiss

under Rule 12(b)(6), however, the district court must construe all facts and draw all reasonable inferences in favor 

of CardioNet, the non-moving party. See Athena, 915 F.3d 

at 749. Here, there is no record evidence undermining the 

statements in the written description concerning the benefits of the claimed device. The district court’s finding is 

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contrary to fact and fails to draw all reasonable inferences 

in CardioNet’s favor.

Furthermore, the district court erred in analogizing the

’207 patent claims to certain ineligible “computer-implemented claims for collecting and analyzing data to find specific events.” District Court Op., 348 F. Supp. 3d at 92–93. 

In particular, the district court found comparable our decisions in Berkheimer and FairWarning IP, LLC v. Iatric 

Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016). Generalizing 

the asserted claims as being directed to collecting, analyzing, and reporting data is inconsistent with our instruction 

that courts “‘be careful to avoid oversimplifying the claims’ 

by looking at them generally and failing to account for the 

specific requirements of the claims.” McRO, 837 F.3d 

at 1313 (citations omitted). In stark contrast to the claims 

in Berkheimer and FairWarning IP, the claims of the 

’207 patent do not merely collect electronic information, 

display information, or embody mental processes. Indeed, 

the claims of the ’207 patent do not “fit into the familiar 

class of claims that” focus on “certain independently abstract ideas that use computers as tools.” SAP Am., Inc. 

v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)

(quoting Elec. Power, 830 F.3d at 1354). Rather, as discussed above, they fit into the class of claims that focus on

“an improvement in computers [and other technologies] as 

tools.” Id. Accordingly, the district court’s and InfoBionic’s 

reliance on these cases was misplaced.

Because we conclude under Alice step one that the asserted claims of the ’207 patent are not directed to an abstract idea, we do not reach Alice step two. See Data 

Engine, 906 F.3d at 1011; Visual Memory, 867 F.3d at 1262. 

The claims are patent eligible under § 101.

C

Finally, we turn to a dispute raised in the parties’ 

briefs and oral argument, namely, whether we can resolve 

this Alice step one issue at the Rule 12(b)(6) stage without 

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CARDIONET, LLC v. INFOBIONIC, INC 19

remanding to assess the state of the art as of the invention 

date to determine whether the asserted claims are directed 

to automating a practice long used by doctors. Compare 

Appellants’ Br. 47 (noting the absence of prior art or expert 

testimony in the record demonstrating that the claims fail 

to improve cardiac monitoring technology) and Oral Arg. 

at 9:16–48, http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2019-1149.mp3 (“There are factual determinations that need to be made here on what was done by 

doctors . . . . Did they negatively weight this premature 

ventricular beats in their diagnosis of atrial fibrillation?”) 

with Appellee’s Br. 49 (“Here . . . the intrinsic record is dispositive.”). We conclude that a remand is unnecessary. Alice step one presents a legal question that can be answered 

based on the intrinsic evidence. 

The analysis under Alice step one is whether the claims 

as a whole are “directed to” an abstract idea, regardless of 

whether the prior art demonstrates that the idea or other 

aspects of the claim are known, unknown, conventional, 

unconventional, routine, or not routine. See Diamond 

v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any 

element or steps in a process, or even of the process itself, 

is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly 

patentable subject matter.”); Am. Axle & Mfg., Inc. 

v. NeapCo Holdings LLC, 939 F.3d 1355, 1362 n.3 

(Fed. Cir. 2019) (“[I]t makes no difference to the section 101 

analysis whether the use of [ineligible subject matter] was 

known in the prior art.”); Data Engine, 906 F.3d at 1011 

(“The eligibility question is not whether anyone has ever 

used tabs to organize information. That question is reserved for §§ 102 and 103. The question of abstraction is 

whether the claim is ‘directed to’ the abstract idea itself.”).

Indeed, subject matter eligibility under § 101 ordinarily is merely the first step in determining the patentability 

of a claim. A patent claim must meet other statutory criteria to be valid, including that its claimed invention be novel 

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20 CARDIONET, LLC v. INFOBIONIC, INC

and nonobvious over the prior art, as well as described adequately to enable its use. See 35 U.S.C. §§ 102, 103, 112. 

While “it may later be determined that [CardioNet’s 

claimed invention] is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty 

under § 102 or nonobviousness under § 103,” Diehr, 

450 U.S. at 191, based on prior art not yet part of the record, the novelty or nonobviousness of the invention has little to no bearing on the question of what the claims are 

“directed to.” 

It is true, as the dissent contends, that the Supreme 

Court in Alice and Bilski v. Kappos identified as abstract 

claims directed to performing on a computer “fundamental 

economic practice[s] long prevalent in our system of commerce.” Alice, 573 U.S. at 219 (holding ineligible patent 

claims directed to the concept of “intermediated settlement,” i.e., the use of a third party to mitigate the risk that 

only one party to an agreed-upon financial exchange will 

satisfy its obligation); Bilski v. Kappos, 561 U.S. 593, 611 

(2010) (holding ineligible claims of a patent application directed to the “basic concept of hedging, or protecting 

against risk,” in the field of commodities trading). 

But, in neither Bilski nor Alice did the Court rely on an 

examination of the prior art as part of its step one inquiry. 

This is consistent with the other cases cited by the dissent. 

In determining what the claims are directed to and 

whether they are directed to an abstract idea, a court may 

well consult the plain claim language, written description, 

and prosecution history and, from these sources, conclude 

that the claims are directed to automating a longstanding 

or fundamental practice. 

Similarly, the court may consult the intrinsic evidence 

and conclude that the claims are directed to improving the 

functionality of a computer or network. The court need not 

consult the prior art to see if, in fact, the assertions of improvement in the patent’s written description are true. 

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CARDIONET, LLC v. INFOBIONIC, INC 21

Rather, “[t]he § 101 patent-eligibility inquiry is only a 

threshold test,” Bilski, 561 U.S. at 602, and we reserve for 

§§ 102 and 103 purposes our comparison of the prior art 

and the claims to determine if the claims are, in fact, an 

improvement over the prior art.

This court’s decision in Enfish, LLC v. Microsoft Corp., 

822 F.3d 1327 (Fed. Cir. 2016), confirms this point. In Enfish, we stated that “the first step in the Alice inquiry . . . 

asks whether the focus of the claims is on the specific asserted improvement in computer capabilities” or, instead, 

on an abstract idea “for which computers are invoked 

merely as a tool.” Id. at 1335–36 (emphasis added). In 

making this inquiry, we examined the patents’ shared written description, including its teachings of the “multiple 

benefits flow[ing] from th[e] design” of the claimed self-referential table for a computer database. Id. at 1333. Our 

conclusion that the claims were directed to a patent-eligible invention was based on the patents’ teachings that the 

claimed “self-referential table functions differently than 

conventional database structures” and “achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory 

requirements.” Id. at 1337; see also id. at 1339 (“The specification’s disparagement of conventional data structures,

combined with language describing the ‘present invention’ 

as including the features that make up a self-referential

table, confirm that our characterization of the ‘invention’

for purposes of the § 101 analysis has not been deceived by 

the ‘draftsman’s art.’”); BASCOM Global Internet Servs.,

Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 

2016) (concluding that, based on the claim language and 

written description, the claims were directed to the abstract idea of filtering content on the Internet); FairWarning IP, 839 F.3d at 1093–95 (concluding that, based on the 

claims, written description, and the patentee’s failure to 

contend that the claims were “directed to an improvement 

in the way computers operate,” the claims were directed to 

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22 CARDIONET, LLC v. INFOBIONIC, INC

an abstract idea of “collecting and analyzing information to 

detect misuse and notifying a user when misuse is detected” (citation omitted)). Thus, the Alice step one inquiry 

in Enfish and our other decisions began, and ended, with 

the patent itself.

Contrary to the dissent’s suggestions, we do not hold 

today that it is impermissible for courts to “look[] outside 

the intrinsic evidence” as part of their Alice step one inquiry, Dissent Op. 9, or that all evidence presented by the 

parties that doctors have long used the claimed techniques 

would be irrelevant to the inquiry in this case. It is within 

the trial court’s discretion whether to take judicial notice 

of a longstanding practice where there is no evidence of 

such practice in the intrinsic record. But there is no basis 

for requiring, as a matter of law, consideration of the prior 

art in the step one analysis in every case. If the extrinsic 

evidence is overwhelming to the point of being indisputable, then a court could take notice of that and find the 

claims directed to the abstract idea of automating a fundamental practice, see Bilski, 561 U.S. at 611—but the court 

is not required to engage in such an inquiry in every case.

Thus, we simply clarify that step one of the Alice framework does not require an evaluation of the prior art or facts 

outside of the intrinsic record regarding the state of the art 

at the time of the invention. Neither Bilski, Alice, nor this 

court’s precedent endorses such an analysis. The dissent

also contends that “numerous cases decided by our court

held that claims were abstract because they claimed 

longstanding practices.” Dissent Op. 7. That unqualified 

statement is simply incorrect. Accordingly, our analysis at 

Alice step one involves examining the patent claims in view 

of the plain claim language, statements in the written description, and the prosecution history, if relevant. See, e.g., 

Athena, 915 F.3d at 750 (“To determine whether a claim is 

directed to an ineligible concept, we have frequently considered whether the claimed advance improves upon a 

technological process or merely an ineligible concept, based 

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CARDIONET, LLC v. INFOBIONIC, INC 23

on both the written description and the claims.” (emphasis 

added) (citations omitted)); Chamberlain Grp., 935 F.3d 

at 1346 (“[W]hile the specification may help illuminate the 

true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim 

language in identifying that focus.” (citation omitted)). The 

analysis does not require a review of the prior art or facts 

outside of the intrinsic record regarding the state of the art 

at the time of the invention. Based on our review of the 

intrinsic record, the ’207 patent claims are not directed to 

a patent-ineligible abstract idea. Therefore, reversal is appropriate.

CONCLUSION

For the foregoing reasons, we reverse the district 

court’s determination that the asserted claims of the

’207 patent recite patent-ineligible subject matter and remand for further proceedings.

REVERSED AND REMANDED

COSTS

Costs to Appellants.

Case: 19-1149 Document: 56 Page: 23 Filed: 04/17/2020
United States Court of Appeals 

for the Federal Circuit ______________________

CARDIONET, LLC, BRAEMAR MANUFACTURING, 

LLC,

Plaintiffs-Appellants

v.

INFOBIONIC, INC,

Defendant-Appellee

______________________

2019-1149

______________________

Appeal from the United States District Court for the 

District of Massachusetts in No. 1:17-cv-10445-IT, Judge 

Indira Talwani.

______________________

DYK, Circuit Judge, dissenting in part and concurring in 

the result.

This is a routine case easily resolved by existing precedent. Under that approach, I agree with the majority that 

the claims have not been shown to be patent ineligible under section 101. I dissent in part because the majority addresses issues never argued by the parties and appears to

suggest approaches not consistent with Supreme Court 

and circuit authority.

I

The ’207 patent is directed to an improved cardiac monitoring device. Defendant contended that the device is 

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2 CARDIONET, LLC v. INFOBIONIC, INC

section 101 ineligible because it amounts to nothing more 

than using a computer to analyze heart function data in 

the same way that had long been done by physicians without a computer. See Appellee’s Br. 2 (“[T]hose claims are 

directed to the abstract idea of identifying commonplace 

heart conditions in the same way doctors have long 

done . . . .”). The district court agreed, relying on the patent specification to find the claims directed to an abstract 

idea. 

Our court has repeatedly held that simply computerizing data analysis previously performed without a computer 

does not give rise to a patent-eligible invention at Alice step 

one. As we explained in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), “our 

precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does 

not confer patent eligibility on an otherwise abstract idea.” 

Id. at 1370. 

On appeal, the patentee argues that “[t]he key factual 

dispute is . . . whether the claims are directed to an improvement to existing technology and contain an inventive 

concept . . . or whether the claims are ‘nothing more than a 

computerized version of a doctor’s approach to diagnosis,’ 

as [defendant] contends.” Reply Br. 34. It concludes that 

“the record lacks any evidence that supports the district 

court’s key factual finding.” Appellant’s Br. 49.

The majority concludes, and I agree, that the patentee 

is correct: the defendant has not established that the patent simply computerizes the use of longstanding data 

analysis. On appeal, the defendant does not argue that the 

case should be remanded to allow the defendant to develop 

a fuller record. See, e.g., Appellee’s Br. 47 (“There are no 

relevant factual disputes.”); Oral Arg. at 22:25–41 (stating 

that “it doesn’t matter” that the record does not clearly 

show that the claimed technique was long prevalent). Instead the defendant argues only that the intrinsic evidence

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CARDIONET, LLC v. INFOBIONIC, INC 3

shows that “the claims are drawn to automating basic diagnostic processes that doctors have long used.” Appellee’s 

Br. 2; see also id. at 19–20; id. at 49 (“Here . . . the intrinsic 

record is dispositive . . . .”); id. at 50 (same). Since the intrinsic record does not establish this, I agree that no remand is required, and that the asserted claims have not

been shown to be patent ineligible.

II

My problem with the majority opinion is that, after determining in Parts II.A and II.B that the record does not 

support the defendant’s contentions, it goes beyond this 

simple resolution in Part II.C. The majority states that it 

is “not hold[ing] . . . that it is impermissible for courts to 

‘look[] outside the intrinsic evidence’ as part of their Alice 

step one inquiry, or that all evidence presented by the parties that doctors have long used the claimed techniques 

would be irrelevant to the inquiry in this case,” but the majority concludes that “step one of the Alice framework does 

not require an evaluation of the prior art or facts outside of 

the intrinsic record regarding the state of the art at the 

time of the invention.” Maj. Op. 22 (citation omitted) (quoting Dissent Op. 9). At the same time, the majority states 

“[i]t is within the trial court’s discretion whether to take 

judicial notice of a longstanding practice where there is no 

evidence of such practice in the intrinsic record. But there 

is no basis for requiring, as a matter of law, consideration 

of the prior art in the step one analysis in every case.” Id. 

Thus, on the one hand, the majority recognizes that establishing that a practice is longstanding is clearly relevant, but on the other hand seems to suggest undefined 

limits on the use of extrinsic evidence to determine 

whether a practice was longstanding in the prior art at the 

time of the invention. I agree that the § 101 inquiry is different from § 102/103 analysis, and the mere fact that a 

prior art reference discloses an idea does not make it 

longstanding. But limiting the use of extrinsic evidence to 

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4 CARDIONET, LLC v. INFOBIONIC, INC

establish that a practice is longstanding would be inconsistent with authority. No case has ever said that the nature of a longstanding practice cannot be determined by 

looking at the prior art. I respectfully dissent from the majority’s inclusion of this confusing dicta in Part II.C of the 

opinion.

First, the majority’s views are dicta. As discussed 

above, neither party in the briefing before this court requested a remand to the district court to make the determination of whether the doctors had long practiced the 

claimed process.1 The parties’ focus was almost entirely on 

whether the existing record showed this was a longstanding practice.2

1 The only reference concerning a possible remand 

was made by the patent owner at oral argument. See Oral 

Arg. at 9:16–48 (“There are factual determinations that 

need to be made here on what was done by doctors . . . . Did 

they negatively weight th[ese] premature ventricular beats 

in their diagnosis of atrial fibrillation?”). 2 See also Appellant’s Br. 49 (“[T]he record lacks any

evidence that supports the district court’s key factual finding.”); Appellee’s Br. 29 (“[T]he specification makes plain 

that the purported advantages [of the claimed device] . . . are rooted in the abstract idea itself—the ability 

to distinguish [atrial fibrillation and atrial flutter] from 

other cardiac irregularities by accounting for premature 

ventricular beats, which is the type of mental process doctors long performed.”); Reply Br. 23 (“InfoBionic . . . falsely 

asserts without evidentiary support that the ’207 patent 

merely computerized routine diagnostic methods, [and] erroneously ignores the specification’s teachings about the 

benefits of the invention . . . .”); id. at 1 (“In addition to 

lacking any evidence that proves the ’207 patent merely 

computerizes conventional techniques, InfoBionic ignores 

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CARDIONET, LLC v. INFOBIONIC, INC 5

Second, both parties agreed that longstanding practice 

was relevant to the Alice step one analysis. Oral Arg. at 

9:16–37 (“There are factual determinations that need to be 

made here on what was done by doctors.” (Appellant) (emphasis added)); Reply 34 (“The key factual dispute 

is . . . whether the claims are directed to an improvement 

to existing technology and contain an inventive concept . . . or whether the claims are ‘nothing more than a 

computerized version of a doctor’s approach to diagnosis,’ 

as InfoBionic contends.”). Neither party argued that extrinsic evidence of the prior art is irrelevant to determining 

whether a practice is longstanding. Indeed, the patentee 

repeatedly recognized that extrinsic evidence of the prior 

art is relevant. See Appellant’s Br. 47 (“[The defendant]

did not rely on any prior art that discloses negatively 

weighting premature ventricular beats or the use of nonlinear statistics to identify [atrial fibrillation and atrial 

flutter]. Nor did [the defendant] rely on an expert declaration demonstrating that either technique, individually or 

in combination with the other elements of the asserted 

claims, was known.”).3 Moreover, the parties both 

or dismisses evidence that proves the ’207 patent discloses 

inventive concepts that improved existing cardiac monitoring.”); Appellant’s Br. at 55 (“[N]othing in the patent says 

that the claims merely computerize a routine diagnostic 

method.”); id. at 56–57 (“[N]othing in the patent suggests 

that the claims merely computerize pre-existing techniques for diagnosing [atrial fibrillation and atrial flutter].”).

3 See also Reply 26 (“InfoBionic has not and cannot 

identify any prior art device—conventional or otherwise—

that used this combination of components and algorithms. Nor has InfoBionic identified any pre-existing approach by doctors to diagnosing [atrial fibrillation and 

atrial flutter] that used this combination of components 

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6 CARDIONET, LLC v. INFOBIONIC, INC

discussed a prior art document in their briefing as evidence 

of longstanding practice of doctors. Appellee’s Br. 19 (citing 

to U.S. Patent Pub. 2002/0065473 as evidence that “medical professionals have long been able to discern ventricular 

beats in an electrocardiogram” and that “[d]octors have 

long understood the need to identify and take ventricular 

beats into account.”); Reply 10 (arguing that the document 

“does not show or even suggest that doctors used that identification to improve AF diagnosis”). There was, in short, 

agreement that the prior art was relevant. 

Third, any limitation on the use of extrinsic evidence 

would be inconsistent with binding authority. The Supreme Court and our cases have consistently held that 

whether a practice is “longstanding” or “long prevalent” is 

central to the step one inquiry and have never suggested 

that prior art is irrelevant to that question. In Bilski v. 

Kappos, 561 U.S. 593 (2010), the Court held that “[t]he concept of hedging . . . is an unpatentable abstract idea” because “‘[h]edging is a fundamental economic practice long 

prevalent in our system of commerce.’” Id. at 611 (emphasis added) (quoting In re Bilski, 545 F.3d 943, 1013 (Fed. 

Cir. 2008) (Rader, J., dissenting)). In Alice Corp. Pty. v. 

CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court 

explained that “the concept of intermediated settlement at 

issue” was “squarely within the realm of ‘abstract ideas,’”

id. at 221, because, “[l]ike the risk hedging in Bilski, the 

concept of intermediated settlement [in Alice] [wa]s ‘“a fundamental economic practice long prevalent in our system 

of commerce,’”” id. at 219 (emphasis added) (quoting Bilski 

v. Kappos, 561 U.S. 593, 611 (2010)). The Court 

and algorithms.”); id. at 10 (“Aside from the patent, the district court does not cite any prior art, physician, expert, 

treatise, article, or concession that supports its holding 

that the patent fails to improve cardiac monitoring technology.”). 

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CARDIONET, LLC v. INFOBIONIC, INC 7

emphasized that “hedging is a longstanding commercial 

practice,” id. at 220 (emphasis added) and “that the mere 

recitation of a generic computer cannot transform [this] patent-ineligible abstract idea into a patent-eligible invention,” id. at 223. As discussed below, numerous cases

decided by our court held that claims were abstract because 

they claimed longstanding practices.

In making the determination that practices are 

longstanding in the section 101 step one analysis, the Supreme Court and our cases have also repeatedly recognized 

the relevance of extrinsic evidence, such as facts determined by judicial notice and party admissions. In Bilski, 

the Supreme Court cited to economics textbooks when finding “the basic concept of hedging” to be a long prevalent

practice, and therefore an abstract idea. Bilski, 561 U.S. 

at 611. In Alice, the Court cited to economics textbooks and 

articles in determining that “the concept of intermediated 

settlement” “is a fundamental economic practice long prevalent in our system of commerce,” and therefore an abstract idea under step one. Alice, 573 U.S. at 221, 219–21

(quoting Bilski, 561 U.S. at 611). 

Our cases have similarly not limited the analysis to the 

intrinsic record. For example, in Capital One Bank, in finding that claims directed to customizing marketing was ineligible, we relied on the fact that “newspaper inserts had 

often been tailored based on information known about the 

customer—for example, a newspaper might advertise 

based on the customer’s location.” 792 F.3d at 1369 (emphasis added). In Affinity Labs of Texas, LLC v. DIRECTV, 

LLC, 838 F.3d 1253 (Fed. Cir. 2016), we found claims for 

“providing out-of-region access to regional broadcast content” to be an abstract idea by relying on the fact that “[t]he 

practice of conveying regional content to out-of-region recipients has been employed by nearly every form of media 

that has a local distribution.” Id. at 1258 (emphasis 

added). In Content Extraction & Transmission LLC v. 

Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 

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8 CARDIONET, LLC v. INFOBIONIC, INC

2014), we found claims to a method for recognizing images

from hard copy documents to be abstract by considering 

that “banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, 

and identity of account holder, and stored that information 

in their records.” Id. at 1347 (emphasis added). In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), we found 

that “the claims are directed to an abstract idea of parsing 

and comparing data” by considering patentee’s 

“admi[ssion] that [the claimed] parsers had existed for 

years prior to his patent.” Id. at 1366–67 (emphasis 

added). In In re Brown, 645 F. App’x 1014 (Fed. Cir. 2016), 

we found at step one that “the claims are drawn to the abstract idea of assigning hair designs to balance head shape” 

because the patent owner admitted “that the hair cutting 

step ‘employ[ed] a well-known concept’ [and] that the hair 

patterns applied are ‘industry recognized.’” Id. at 1016

(emphasis added).4 In each of these cases, the court did not 

4 In Intellectual Ventures I LLC v. Erie Indem. Co., 

850 F.3d 1315 (Fed. Cir. 2017), we found claims to be directed to the abstract idea of “creating and using an index 

to search for and retrieve data.” Id. at 1328. In the step 

one analysis, the court found it persuasive that “[t]his type 

of activity, i.e., organizing and accessing records through 

the creation of an index-searchable database, includes 

longstanding conduct that existed well before the advent of 

computers and the Internet.” Id. at 1327 (emphasis 

added). In In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), we found that “attaching classification data, such as dates and times, to images 

for the purpose of storing those images in an organized 

manner is a well-established ‘basic concept’ sufficient to 

fall under Alice step 1.” Id. at 613 (emphasis added); see 

also Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 

1302, 1305–06 (Fed. Cir. 2018) (determining that “[b]y 

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limit itself to intrinsic evidence, in each case relying on evidence outside of the patent itself. 

Significantly, this approach has been recognized in the 

very cases on which the majority itself relies. Maj. Op. 21–

22. In BASCOM Global Internet Services, Inc. v. AT&T 

Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), we found

that “filtering content [wa]s an abstract idea because it is 

a longstanding, well-known method of organizing human 

behavior,” though the claims provided an inventive concept

at step two by “carv[ing] out a specific location for the filtering system (a remote ISP server) and require[d] the filtering system to give users the ability to customize filtering 

for their individual network accounts.” Id. at 1348, 1352. 

In FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 

(Fed. Cir. 2016), we found ineligible claims “directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected.” Id. at 1094. We 

noted, in finding the claims directed to an abstract idea at 

step one, that the claims ask “the same questions . . . that 

humans in analogous situations detecting fraud have 

asked for decades, if not centuries” and thus “merely implement an old practice in a new environment.” Id. at 

1094–95. In making the step one determination, we thus

have persistently looked outside the intrinsic evidence. 

itself, virus screening [wa]s well-known and constitutes an 

abstract idea,” as was “performing the virus scan on an intermediary computer,” though ultimately finding claims eligible because a “system and method for providing 

computer security by attaching a security profile to a downloadable” “employ[ed] a new kind of file that enable[d] a 

computer security system to do things it could not do before.” (first alteration in original) (emphasis added) (first 

quote from Intellectual Ventures I LLC v. Symantec Corp., 

838 F.3d 1307, 1319 (Fed. Cir. 2016))). 

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The majority, while recognizing the relevance of 

longstanding practice in the step one analysis, attempts to 

distinguish the above cases by suggesting undefined limits 

on the use of prior art to determine the “state of the art at 

the time of the invention.” Maj. Op. 22. The majority opinion cites to no authority to support any such limits. Determining whether something is a longstanding practice 

necessarily requires an analysis of whether the practice is

part of a well-established “state of the art at the time of the 

invention.” Id. “Evidence of the state of the art . . . . consists of proof of what was old and in general use at the time 

of the alleged invention. It is received . . . to show what 

was then old, [and] to distinguish what was new . . . .” 

Brown v. Piper, 91 U.S. 37, 41 (1875). 

The panel does not purport to overrule prior cases, nor 

could it. But the language of the panel opinion is likely to 

sow confusion for both the district court and the bar. 

I respectfully dissent from Part II.C of the majority 

opinion, and concur in the result.

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