Page 2 - Intellectual Property

S2 | MONDAY, MARCH 27, 2017 | Intellectual Property
| NYLJ.COM
Patents for Wearable Technologies That Withstand Patentability Challenges
BY WALTER M. EGBERT III
W
earable technologies—or more broadly, connected devices that may be worn, ingested or implanted in a
user—have the potential to radically improve the user’s experience, but the interdisciplin- ary nature of the technology and reliance on data analytics introduce challenges for inno- vators seeking patent protection. The U.S. Supreme Court decision of Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) and its progeny provide an imprecise legal frame- work that requires developers of wearable technologies to evaluate their patent ling strategies carefully. Accordingly, innovators are advised to articulate the technological solutions to technological problems that are solved by the innovative technology.
The advantages provided by wearable, con- nected devices typically arise from the syn- ergy of technologies previously considered unrelated—medical diagnostic or treatment devices, data analytics and storage, power control, and communications—each of which are mature, stand-alone technologies. In many cases, the combination of these technolo- gies have the potential to be “disruptive” to their respective markets, providing a marked improvement in the utility of data gathered, or in the precision or duration of the treatment provided. For example, connected glucose sensors provide the capability of identifying long-term physiological trends or predicting hypoglycemic episodes that individual nger- stick measurements cannot provide. Similarly, implanted drug delivery devices with wireless connectivity can allow a physician to carefully monitor compliance and adjust drug dosage to meet a patient’s needs.
Like software-related inventions, patent claims directed to wearable technologies run the risk of being considered invalid under 35 U.S.C. §101 as being directed to patent- ineligible subject matter. Relying on the well- known two-step formulation set forth in Alice, courts are to rst determine whether “the claims at issue are directed to one of [the] patent-ineligible concepts ... If so, [the courts next] consider elements of each claim both individually and “as an ordered » Page S9
WALTER M. EGBERT III is a partner in Foley Hoag’s intellectual property department.
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Intellectual Property
Rebecca Baker, Deputy Editor-In-Chief Angela Turturro, Sections Editor Agnieszka Czuj, Design
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