Case: 19-1789     Document: 58    Page: 1   Filed: 07/31/2020




   United States Court of Appeals
       for the Federal Circuit
                   ______________________

   XY, LLC, BECKMAN COULTER, INC., INGURAN,
                        LLC,
                Plaintiffs-Appellants

                             v.

                TRANS OVA GENETICS, LC,
                     Defendant-Appellee
                   ______________________

                         2019-1789
                   ______________________

     Appeal from the United States District Court for the
 District of Colorado in No. 1:17-cv-00944-WJM-NYW,
 Judge William J. Martinez.
                  ______________________

                   Decided: July 31, 2020
                   ______________________

     PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld
 LLP, Washington, DC, argued for all plaintiffs-appellants.
 Plaintiffs-appellants XY, LLC, Inguran, LLC also repre-
 sented by Z.W. JULIUS CHEN; DANIEL LYNN MOFFETT, KIRT
 S. O'NEILL, San Antonio, TX.

      ALAN L. BARRY, K&L Gates LLP, Chicago, IL, for plain-
 tiff-appellant Beckman Coulter, Inc.

    DAVID A. KELLY, Barnes & Thornburg LLP, Atlanta,
 GA, argued for defendant-appellee. Also represented by
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 2                           XY, LLC v. TRANS OVA GENETICS, LC




 JOSHUA M. KALB, Hunton Andrews Kurth LLP, Atlanta,
 GA.
               ______________________

     Before WALLACH, PLAGER, and STOLL, Circuit Judges.
 STOLL, Circuit Judge.
      XY, LLC, Beckman Coulter, Inc., and Inguran, LLC
 (collectively, “XY”) appeal the district court’s dismissal of
 certain patent-infringement allegations against Trans Ova
 Genetics, LC. The district court held asserted claims 1–23
 of XY’s U.S. Patent No. RE46,559 ineligible under
 35 U.S.C. § 101. The district court also held that XY’s pa-
 tent-infringement allegations with respect to certain
 claims of U.S. Patent Nos. 6,732,422, 7,723,116, and
 8,652,769 were claim-precluded based on a prior lawsuit
 filed by XY against Trans Ova. We conclude that the as-
 serted claims of the ’559 patent are directed to a patent-
 eligible improvement to a method of sorting particles using
 flow cytometry technology, not to an abstract idea, and that
 the district court did not apply the proper legal standard to
 its claim-preclusion analysis. Accordingly, we reverse the
 district court’s judgment that the asserted claims of the
 ’559 patent are ineligible under § 101, vacate the district
 court’s claim-preclusion judgment, and remand for further
 proceedings.
                         BACKGROUND
                               I
     The ’559 patent is titled “Enhancing Flow Cytometry
 Discrimination with Geometric Transformation.” Flow cy-
 tometers can be used as “high speed jet-in-air sorters to
 discriminate particles and cells that are only subtly differ-
 ent.” ’559 patent col. 1 ll. 35–38. The ’559 patent relates
 to “apparatus and methods for real-time discrimination of
 particles while being sorted by flow cytometry . . . resulting
 in enhanced discrimination between populations of
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 XY, LLC v. TRANS OVA GENETICS, LC                             3



 particles.” Id. at col. 1 ll. 26–31. For example, the inven-
 tion of the ’559 patent “can be used to separate X from Y
 bearing sperm,” an application useful in animal husbandry
 to “guarantee[] the sex of off-spring.” Id. at col. 1 ll. 38–51.
      In the flow cytometry apparatus and methods disclosed
 by the ’559 patent, particles may be entrained in a fluid
 stream in the flow cytometer and coupled with a light-emit-
 ting element, such as a dye. Id. at col. 3 ll. 4–12. Figure 1
 illustrates a flow cytometry sort overview:




 Id. Fig. 1; see also id. at col. 3 ll. 24–25. After passing
 through a laser beam (34), particles coupled to a light-emit-
 ting element may emit signals, such as fluorescence, which
 are then collected by at least one signal detector, such as a
 forward scatter detector (30). Id. at col. 3 ll. 10–15, 24–34.
 The “signal detector may be connected to a system . . . in
 which signal data indicative of the signals may be pro-
 cessed and analyzed in order to determine a sort decision.”
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 Id. at col. 3 ll. 36–40. “While a sort decision is being deter-
 mined, particles may pass through a drop delay (35).” Id.
 at col. 3 ll. 41–43. Following a sort decision, “a pulse of
 charge (37) may be applied to a droplet (23) containing a
 particle. Droplets may pass through charged deflection
 plates (38) in order to sort particles into a desired sort re-
 ceptacle (40).” Id. at col. 3 ll. 44–48.
     To distinguish particles and determine a sort decision,
 signal data affiliated with each individual particle may be
 analyzed, such as by use of a signal processor to “convert[]
 signals . . . affiliated with each individual particle into n-di-
 mensional parameter data.” Id. at col. 3 ll. 50–54. Signals
 and n-dimensional parameter data “may be plotted on a
 graph . . . to categorize the data points into a population.”
 Id. at col. 3 l. 64 – col. 4 l. 4. When particles are similar
 and signals affiliated with the particles vary only slightly,
 “the n-dimensional parameter data corresponding to the
 signals,” when plotted, “may place data points very close
 together,” such that “it may be difficult to categorize the
 data points into a population.” Id.
     “Conventional technologies may have disregarded
 these points that are so close together and may have de-
 cided to throw out that particle because it could not have
 been distinguished.” Id. at col. 4 ll. 4–7. For example, “us-
 ing a typical unaltered light signal detected by a flow cy-
 tometer” may not discriminate between “male determining
 and female determining sperm cell[s].” Id. at col. 4 ll. 56–
 58.
     Accordingly, the ’559 patent discloses that “[i]t may be
 desirable in embodiments to reconfigure data to enhance
 separation between data points,” such as by “geometric
 transformation.” Id. at col. 4 ll. 7–14. For example, em-
 bodiments of the invention may employ a signal processor
 that converts signal data “into n-dimensional parameter
 data to which at least one alteration (48) (e.g. rotational
 alteration, translation operation, scaling operation, any
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 XY, LLC v. TRANS OVA GENETICS, LC                           5



 combination of these and the like) may be applied.” Id.
 at col. 5 ll. 41–49.
      The claimed methods increase spatial separation of
 data corresponding to each population at least by “rotation-
 ally alter[ing] the n-dimensional parameter data.” Id.
 at col. 17 ll. 14–19. For example, embodiments of the
 claimed “invention may involve rotating data to increase a
 separation of data from male determining cells to female
 determining cells.” Id. at col. 5 ll. 58–60; see also id.
 at col. 19 ll. 16–21 (similar). The ’559 patent discloses that
 “[i]n addition to rotation, it has been found that there may
 be a need for tracking and zooming of the data.” Id.
 at col. 7 ll. 20–22. Accordingly, in addition to “rotationally
 alter[ing] the n-dimensional parameter data,” claimed em-
 bodiments of the invention may further include “scaling”
 and/or “translating the n-dimensional parameter data.” Id.
 at col. 17 ll. 14–19, 48–54, col. 18 ll. 13–22. “These combi-
 nations can be significant, for example sex selection may
 not be optimally achieved by any other method, hence the
 importance of this invention.” Id. at col. 7 ll. 22–25. The
 invention’s “[c]larity of delineation may allow each popula-
 tion to be selected more accurately than in any other sepa-
 ration system.” Id. at col. 6 ll. 54–56.
    Claim 1 is the sole independent claim of the ’559 patent
 and recites:
     1. A method of operating a flow cytometry appa-
     ratus with at least n detectors to analyze at least
     two populations of particles in the same sample,
     the method comprising:
     (a) establishing a fluid stream in the flow cytome-
     try apparatus with at least n detectors, the at least
     n detectors including a first detector and a second
     detector;
     (b) entraining particles from the sample in the fluid
     stream in the flow cytometry apparatus;
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     (c) executing instructions read from a computer
     readable memory with a processor, the processor
     being in communication with the first detector in
     the flow cytometer, to detect a first signal from the
     first detector based on individual particles in the
     fluid stream;
     (d) executing instructions read from the computer
     readable memory with the processor, the processor
     being in communication with the second detector in
     the flow cytometer, to detect a second signal from
     the second detector based on the individual parti-
     cles in the fluid stream;
     (e) executing instructions read from the computer
     readable memory with the processor to convert at
     least the first signal and the second signal into
     n-dimensional parameter data for detected parti-
     cles in the sample, wherein the n-dimensional pa-
     rameter data for particles from the at least two
     populations overlap in at least one of the dimen-
     sions;
     (f) executing instructions read from the computer
     readable memory with the processor to rotationally
     alter the n-dimensional parameter data so that
     spatial separation of the data from the particles
     from the at least two populations in the at least one
     dimension that is overlapped is increased;
     (g) executing instructions read from the computer
     readable memory with the processor to real-time
     classify each of the individual detected particles
     into one of a first population and a second popula-
     tion of the at least two populations based on at
     least the rotationally altered n-dimensional pa-
     rameter data; and
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 XY, LLC v. TRANS OVA GENETICS, LC                               7



     (h) using the real-time classification, sorting the in-
     dividual particles with the flow cytometer.
 Id. at col. 16 l. 54 – col. 17 l. 27.
                                  II
     In December 2016, XY sued Trans Ova for infringe-
 ment of seven patents relating to technology for sex selec-
 tion of non-human mammals. When XY filed its 2016
 lawsuit, it had an appeal pending from a 2012 lawsuit
 against Trans Ova asserting infringement of different pa-
 tents directed to similar technology. See XY, LLC v. Trans
 Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018).
      Trans Ova filed a motion for judgment on the plead-
 ings, arguing that the asserted claims of the ’559 patent are
 ineligible under § 101. Applying the Supreme Court’s two-
 step framework for determining patent eligibility, the dis-
 trict court determined that the ’559 patent claims are inel-
 igible under § 101. XY, LLC v. Trans Ova Genetics, LC,
 333 F. Supp. 3d 1097, 1102–06 (D. Colo. 2018) (Eligibility
 Op.) (applying Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
 (2014)). At Alice step one, the district court held that
 claim 1 of the ’559 patent was directed to the abstract idea
 of a “mathematical equation that permits rotating multi-
 dimensional data.” Id. at 1105. At Alice step two, the dis-
 trict court held that the asserted claims lacked an in-
 ventive concept because XY admitted that each claim
 element was known in the art. See id. at 1105–06.
     Trans Ova also filed a motion to dismiss, arguing that
 the district court should hold XY’s infringement allegations
 regarding the ’422, ’116, and ’769 patents barred by claim
 preclusion based on XY’s 2012 lawsuit. The district court
 granted Trans Ova’s motion to dismiss with respect to the
 ’422, ’116, and ’769 patent-infringement allegations. XY,
 LLC v. Trans Ova Genetics, LC, 323 F.R.D. 630, 633–34,
 638 (D. Colo. 2018) (Claim Preclusion Op.). The district
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 8                           XY, LLC v. TRANS OVA GENETICS, LC




 court stayed proceedings on XY’s remaining causes of ac-
 tion pending the outcome of this appeal.
     XY appeals.      We have jurisdiction pursuant to
 28 U.S.C. § 1295(a)(1).
                         DISCUSSION
     XY argues that the district court erred in holding the
 asserted claims of the ’559 patent ineligible under § 101
 and in holding XY’s infringement allegations regarding the
 ’422, ’116, and ’769 patents barred by claim preclusion. We
 address each argument in turn.
                               I
     We hold that the district court erred in granting Trans
 Ova’s motion for judgment on the pleadings that the as-
 serted claims of the ’559 patent are ineligible under § 101.
     We apply regional circuit law in our review of proce-
 dural aspects of a motion for judgment on the pleadings.
 RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1325–
 26 (Fed. Cir. 2017). Applying Tenth Circuit law, we review
 de novo the district court’s grant of Trans Ova’s motion for
 judgment on the pleadings, accepting as true all facts
 pleaded by XY. See Aspenwood Investment Co. v. Martinez,
 355 F.3d 1256, 1259 (10th Cir. 2004). Patent eligibility un-
 der § 101 is ultimately a question of law that may contain
 underlying issues of fact. Berkheimer v. HP Inc., 881 F.3d
 1360, 1365 (Fed. Cir. 2018) (first citing Intellectual Ven-
 tures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338
 (Fed. Cir. 2017); and then citing Mortg. Grader, Inc. v. First
 Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir.
 2016). We review a district court’s patent eligibility deter-
 mination de novo. Id.
     Section 101 provides that “[w]hoever invents or discov-
 ers 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.
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 XY, LLC v. TRANS OVA GENETICS, LC                            9



 “The Supreme Court has identified three types of subject
 matter that are not patent-eligible: ‘Laws of nature, natu-
 ral phenomena, and abstract ideas are not patentable.’”
 CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1367
 (Fed. Cir. 2020) (quoting Alice, 573 U.S. at 216). The Su-
 preme Court has recognized, however, that “[a]t some level,
 ‘all inventions . . . embody, use, reflect, rest upon, or apply
 laws of nature, natural phenomena, or abstract ideas.’” Al-
 ice, 573 U.S. at 217 (ellipses in original) (quoting Mayo Col-
 laborative 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.
 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1981)). In-
 deed, “applications” of abstract concepts “‘to a new and use-
 ful end’ . . . remain eligible for patent protection.” Id.
 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
     The Supreme Court’s two-step Alice framework guides
 courts in determining patent eligibility under § 101. First,
 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 1343, 1346
 (Fed. Cir. 2015)). “If the claims are not directed to an ab-
 stract idea, the inquiry ends.” Id. If the claims are directed
 to an abstract idea, we proceed to step two and “consider
 the elements of each claim both individually and ‘as an or-
 dered combination’ to determine whether the additional el-
 ements ‘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).
     Beginning our analysis with Alice step one, we con-
 clude that the district court erred when it held that the
 claims are directed to “the mathematical equation that per-
 mits rotating multi-dimensional data.” Eligibility Op.,
 333 F. Supp. 3d at 1105. As Trans Ova’s counsel acknowl-
 edged during oral argument, claim 1 of the ’559 patent is
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 10                          XY, LLC v. TRANS OVA GENETICS, LC




 not merely directed to a “mathematical equation that per-
 mits rotating multi-dimensional data.” Oral Arg. at 22:34–
 56, http://oralarguments.cafc.uscourts.gov/default.aspx?fl
 =2019-1789.mp3 (characterizing claim 1 of the ’559 patent
 as directed to “using math to sort particles in real time” in
 a flow cytometer). Rather, the claims are directed to a pur-
 portedly improved method of operating a flow cytometry
 apparatus to classify and sort particles into at least two
 populations in real time, wherein first and second detectors
 detect signals from individual particles and a processor
 converts the signals to n-dimensional parameter data and
 rotationally alters that data to increase spatial separation
 among the data, thereby facilitating classification and sort-
 ing of each individual particle.
     We find the Supreme Court’s decision in Diehr and this
 court’s decision in Thales Visionix Inc. v. United States,
 850 F.3d 1343 (Fed. Cir. 2017), instructive in our step one
 analysis. In Diehr, the Supreme Court held eligible claims
 reciting a method of operating a rubber-molding press em-
 ploying computer components and the well-known Arrhe-
 nius equation to constantly determine the temperature of
 the press’s mold, calculate when the optimal cure time was
 reached, and automatically open the press at that time.
 See 450 U.S. at 179 n.5. The result was “a synthetic rubber
 product that ha[d] been perfectly cured—a result hereto-
 fore unknown in the art.” Id. at 193 n.15.
      In Thales, we held patent-eligible claims “directed to
 systems and methods that use inertial sensors in a non-
 conventional manner to reduce errors in measuring the rel-
 ative position and orientation of a moving object on a mov-
 ing reference frame.” 850 F.3d at 1348–49. By configuring
 inertial sensors so as to measure gravitational field and po-
 sition information relative to the moving platform, rather
 than measuring inertial changes with respect to the earth,
 the inventors could “increase[] the accuracy with which in-
 ertial sensors measure the tracked object on the moving
 frame” and “track the position and orientation of the object
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 XY, LLC v. TRANS OVA GENETICS, LC                             11



 within the moving platform without input from a vehicle
 attitude reference system or calculating orientation or po-
 sition of the moving platform itself.” Id. at 1345.
     The asserted ’559 patent claims are analogous to the
 claims at issue in Diehr and Thales. Like the claims in
 Diehr, the asserted claims “describe in detail a step-by-step
 method” for accomplishing a physical process. 450 U.S.
 at 184. Diehr’s claimed process “mold[ed] precision syn-
 thetic rubber” to produce “a synthetic rubber product that
 has been perfectly cured,” id. at 184, 193 n.15, and the
 ’559 patent’s claimed method classifies and separates indi-
 vidual particles from a sample “more accurately than in
 any other separation system,” ’559 patent col. 6 ll. 54–56.
 Diehr’s claims and the asserted claims of the ’559 patent
 each represent a purported improvement to otherwise-
 known industrial or laboratory processes through specific
 application of mathematical algorithms.
      Similarly, the Thales claims and the asserted ’559 pa-
 tent claims both recite methods in which at least two sen-
 sors or detectors gather data about an object before
 mathematical operations are applied to the gathered data
 to generate more accurate information about the object
 than was previously possible in the art. Thales, 850 F.3d
 at 1345–46; ’559 patent col. 6 ll. 54–56, col. 16 l. 54 – col. 17
 l. 27. Both sets of claims purport to improve results—“in-
 creas[ing] the accuracy with which inertial sensors meas-
 ure the tracked object on the moving frame” in Thales, 850
 F.3d at 1345, and supplying “the accuracy required to pro-
 vide highly pure particle separation” of similar particles in
 the ’559 patent, ’559 patent col. 7 ll. 13–16.
     As in Diehr and Thales, the asserted ’559 patent claims
 “implement[] or appl[y] [mathematical] formula[s] in a
 structure or process which, when considered as a whole, is
 performing a function which the patent laws were designed
 to protect.” Diehr, 450 U.S. at 192; see Thales, 850 F.3d
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 12                            XY, LLC v. TRANS OVA GENETICS, LC




 at 1347–48 (quoting Diehr, 450 U.S. at 192). The asserted
 claims therefore satisfy the requirements of § 101.
      Contrary to Trans Ova’s argument and the district
 court’s decision, the ’559 patent claims are not analogous
 to those held ineligible in Parker v. Flook, 437 U.S. 584
 (1978). The representative claim in Flook “simply pro-
 vide[d] a new and presumably better method for calculat-
 ing alarm limit values,” requiring nothing more than
 updating an alarm limit—a number—through application
 of the recited formula. Id. at 585, 594–95. Though Flook’s
 claim was cabined to “updating the value of at least one
 alarm limit . . . in a process comprising the catalytic chem-
 ical conversion of hydrocarbons,” neither the claim nor the
 specification provided any guidance regarding details of
 the claimed method. Id. at 586, 596. The patent applica-
 tion at issue contained no “disclosure relating to the chem-
 ical processes at work, the monitoring of process variables,
 or the means of setting off an alarm or adjusting an alarm
 system.” Id. at 586. Accordingly, the Supreme Court con-
 cluded that the patent application was directed to nothing
 more than “a formula for computing an updated alarm
 limit.” Id.
     Here, by contrast, claim 1 of the ’559 patent recites an
 improved method of operating a flow cytometry apparatus
 to sort individual particles in the same sample in real time,
 and includes a detailed recitation of the means for doing so.
 ’559 patent col. 6 ll. 54–56, col. 16 l. 54 – col. 17 l. 27.
 Though the asserted claims employ formulas to improve
 classification and separation of individual particles, the
 formulas operate to achieve the improved result of the
 claimed method only when combined with the specific de-
 tectors and other flow cytometry limitations in the claims.
 See id. at col. 6 ll. 33–56, col. 16 l. 54 – col. 17 l. 27. As the
 Supreme Court has stated, “a process is not unpatentable
 simply because it contains a law of nature or a mathemat-
 ical algorithm.” Diehr, 450 U.S. at 187 (quoting Flook,
 437 U.S. at 590); see Thales, 850 F.3d at 1349 (“That a
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 XY, LLC v. TRANS OVA GENETICS, LC                          13



 mathematical equation is required to complete the claimed
 method[s] . . . does not doom the claims to abstraction.”).
 Like the claims in Diehr and Thales, claim 1 of the ’559 pa-
 tent incorporates applied mathematics in a purported im-
 provement to an otherwise-known method to yield an
 improved result.
      Trans Ova’s and the district court’s analogies to Cleve-
 land Clinic Foundation v. True Health Diagnostics LLC,
 859 F.3d 1352 (Fed. Cir. 2017), are similarly unavailing.
 The Cleveland Clinic claims used a known laboratory tech-
 nique to observe a previously unknown natural phenome-
 non. 859 F.3d at 1360–61. By contrast, the ’559 patent’s
 claimed invention purports to improve a laboratory tech-
 nique for detecting, classifying, and sorting particles from
 an individual sample, so as to sort each population of par-
 ticles “more accurately than in any other separation sys-
 tem.” ’559 patent col. 6 ll. 54–56.
     Having concluded that the asserted claims of the
 ’559 patent are not directed to an abstract idea at Alice step
 one, we need not reach Alice step two. See Data Engine
 Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed. Cir.
 2018) (citing Core Wireless Licensing S.A.R.L. v. LG Elecs.,
 Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018)).
                               II
     Turning to the issue of claim preclusion, the parties’
 only dispute concerns whether the district court properly
 concluded that XY’s 2012 and 2016 lawsuits present the
 same cause of action. XY argues that the district court
 erred by failing to compare the currently asserted patent
 claims to the previously asserted patent claims to deter-
 mine whether the causes of action in the two lawsuits are
 essentially the same. We agree.
     “In assessing claim preclusion, we apply the law of the
 regional circuit in which the district court sits.” SimpleAir,
 Inc. v. Google LLC, 884 F.3d 1160, 1165 (Fed. Cir. 2018)
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 14                           XY, LLC v. TRANS OVA GENETICS, LC




 (citing Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344,
 1348 (Fed. Cir. 2014)). “To apply claim preclusion, ‘three
 elements must exist: (1) a [final] judgment on the merits in
 an earlier action; (2) identity of parties or privies in the two
 suits; and (3) identity of the cause of action in both suits.’”
 Lenox MacLaren Surgical Corp. v. Medtronic, Inc.,
 847 F.3d 1221, 1239 (10th Cir. 2017) (alteration in origi-
 nal) (quoting King v. Union Oil Co. of Cal., 117 F.3d 443,
 445 (10th Cir. 1997)). “[W]hether a particular cause of ac-
 tion in a patent case is the same as or different from an-
 other cause of action has special application to patent
 cases, and we therefore apply our own law to that issue.”
 Senju, 746 F.3d at 1348 (citing Acumed LLC v. Stryker
 Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008)).
      Our cases define a cause of action based on the trans-
 actional facts from which it arises. See SimpleAir, 884 F.3d
 at 1165 (first citing Senju, 746 F.3d at 1349; and then cit-
 ing Acumed, 525 F.3d at 1323–24). In a patent case, trans-
 actional facts include “both the asserted patents and the
 accused activity.” Id. (first citing Senju, 746 F.3d at 1349;
 and then citing Acumed, 525 F.3d at 1323–24). “[W]here
 different patents are asserted in a first and second suit, a
 judgment in the first suit will trigger claim preclusion only
 if the scope of the asserted patent claims in the two suits is
 essentially the same.” Id. at 1167.
     Here, the district court stated the proper test: whether
 the scope of the patent claims asserted in the 2012 and
 2016 lawsuits was “‘materially’ the same.” Claim Preclu-
 sion Op., 323 F.R.D. at 635; see SimpleAir, 884 F.3d
 at 1167. But it did not actually address or compare any of
 the asserted claims of the ’422, ’116, or ’769 patents to the
 patent claims asserted in the 2012 litigation. Instead, the
 district court concluded that claim preclusion applied to
 XY’s ’422 and ’116 patent-infringement allegations simply
 because (1) these patents issued before XY filed the 2012
 lawsuit; and (2) XY’s allegations of infringement “address
 the same, or substantially the same subject matter as
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 XY, LLC v. TRANS OVA GENETICS, LC                          15



 previously filed claims and [are] directed at a previously
 accused product or process.” Claim Preclusion Op., 323
 F.R.D. at 635–36, 638. The district court provided no fur-
 ther explanation of why the subject matter of the ’422 and
 ’116 patent claims is the same as that of the previously as-
 serted patent claims. Instead, the district court merely
 concluded, without explanation, that the ’422 and ’116 pa-
 tents were “part of the same transaction that prompted the
 2012 [l]awsuit,” because they were “related in time, origin,
 and motivation” to, and would have been “a convenient
 trial unit” with, the patents asserted in the 2012 lawsuit.
 Id. at 638. The ’769 patent issued after the deadline for XY
 to amend its complaint in the 2012 lawsuit without leave
 of court. But the district court reasoned that, since the
 ’769 patent “was a continuation of a patent already in suit,”
 and “would be accusing the same Trans Ova products and
 processes,” “XY had a duty to move to amend” its complaint
 in the 2012 lawsuit to add the ’769 patent. Id.
     We find the claim-preclusion issue here materially in-
 distinguishable from that in SimpleAir. In SimpleAir, we
 vacated the district court’s holding that two patent law-
 suits involved the same cause of action. 884 F.3d at 1164,
 1171. The district court’s holding was based solely on the
 fact that the earlier-asserted patents and the later-as-
 serted patents shared a common specification and were
 continuations of, and terminally-disclaimed to, the same
 parent patent. Id. at 1164. We distinguished claims in ter-
 minally disclaimed continuation patents from reexamined
 claims, noting that unlike reexamined claims, “terminally-
 disclaimed continuation patents could ‘provide larger claim
 scope to a patentee than the patentee had under’ the parent
 patent.” Id. at 1167 (quoting Senju, 746 F.3d at 1353). Ac-
 cordingly, we held that “given the substantively different
 requirements of continuation patents as compared to reex-
 aminations, the district court erred in holding SimpleAir’s
 latest suit to be claim-precluded without any comparison of
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 16                          XY, LLC v. TRANS OVA GENETICS, LC




 the asserted claims to the claims involved in” SimpleAir’s
 prior lawsuits. Id.
      Like SimpleAir, the present case involves later-as-
 serted patent claims that “could ‘provide larger claim scope
 to a patentee’” than the earlier-asserted patent claims. Id.
 (quoting Senju, 746 F.3d at 1353). The ’422 and ’769 pa-
 tents are continuations or continuations-in-part of U.S. Pa-
 tent No. 6,149,867, which was asserted in the 2012 lawsuit,
 and the ’769 patent is terminally-disclaimed over certain
 patents asserted in the 2012 lawsuit. The ’116 patent is
 closely related to and incorporates by reference the previ-
 ously asserted ’867 patent. In its decision, the district court
 did not even mention the asserted claims of the ’422, ’116,
 or ’769 patents, let alone analyze their scope as compared
 to the scope of the patent claims asserted in XY’s 2012 law-
 suit, as required under SimpleAir. See 884 F.3d at 1167.
 We thus conclude that the district court erred in its claim-
 preclusion analysis by failing to compare the scope of the
 patent claims asserted in the 2012 lawsuit with the scope
 of the patent claims asserted in the 2016 lawsuit.
     For its part, Trans Ova argues that we should never-
 theless affirm the district court’s judgment because the as-
 serted claims of the ’422, ’116, and ’769 patents are
 “essentially the same” as the patent claims asserted in XY’s
 2012 lawsuit. XY disputes this characterization, arguing
 that the asserted claims of the ’422, ’116, and ’769 patents
 have a “materially different scope” from the patent claims
 asserted in XY’s 2012 lawsuit. Reply Br. 26; see also id.
 at 24–29. For example, XY maintains that the ’116 patent
 claims’ recitation of a pulsed laser renders them patentably
 distinct from the patent claims asserted in the 2012 law-
 suit, none of which claim “radiation-based sperm pro-
 cessing.” Appellant’s Br. 44–45. Trans Ova acknowledges
 that the patents asserted in the 2012 lawsuit “do not ex-
 pressly recite . . . using a pulsed laser,” but it maintains
 that this omission is “immaterial,” because those patents
 encompass using a “laser exciter,” and “pulsed lasers were
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 XY, LLC v. TRANS OVA GENETICS, LC                          17



 both well known in the art and an obvious choice to sort
 sperm.” Appellee’s Br. 39–40. We leave it to the district
 court to decide these issues in the first instance and com-
 pare the scope of the asserted claims to those asserted in
 the prior litigation.
     Accordingly, we vacate the district court’s dismissal of
 XY’s infringement allegations as to the ’422, ’116, and
 ’769 patents and remand to the district court to conduct a
 claim-preclusion analysis under the proper standard.
                        CONCLUSION
     We have considered the parties’ remaining arguments
 and do not find them persuasive. For the reasons set forth
 above, we reverse the district court’s judgment that the as-
 serted claims of the ’559 patent are ineligible under § 101.
 We vacate the district court’s dismissal of XY’s infringe-
 ment allegations based on the ’422, ’116, and ’769 patents,
 and remand for further proceedings consistent with this
 opinion.
   REVERSED-IN-PART, VACATED-IN-PART, AND
                 REMANDED
                            COSTS
     Costs to Appellant.
