SmartGene, Inc. v. Advanced Biological Laboratories, SA
555 F. App'x 950
Fed. Cir.2014Background
- SmartGene sued ABL seeking declaratory judgment that U.S. Patents Nos. 6,081,786 and 6,188,988 (claims reciting a method, system, and computer program to guide selection of therapeutic regimens) are ineligible under 35 U.S.C. § 101; ABL counterclaimed for infringement of claims 1 and 23 of both patents.
- Representative claim (claim 1 of the ’786 patent) recites: provide patient information to a computing device with knowledge bases and expert rules; generate a ranked listing of treatment regimens; generate advisory information based on patient data and rules.
- SmartGene moved for summary judgment that all claims of both patents are § 101–ineligible, expressly treating claim 1 as representative; ABL did not contest that characterization in its briefing (but argued at oral argument that system claims differ).
- District court analyzed claim 1 as representative, found it claimed an abstract mental process implemented on a generic computer, and held all claims invalid under § 101; reconsideration was denied.
- On appeal, the Federal Circuit affirmed: (1) the district court properly adjudicated all claims based on SmartGene’s filings and ABL’s failure to develop a contrary argument; and (2) claim 1 is directed to an ineligible mental process implemented on generic computer components.
Issues
| Issue | SmartGene's Argument | ABL's Argument | Held |
|---|---|---|---|
| Whether the district court could resolve eligibility of all claims based on claim 1 as representative | All claims were properly put at issue; claim 1 is representative and differences are immaterial | System and method claims may require different analysis; other claims should not be treated the same as claim 1 | Affirmed: district court properly adjudicated all claims; ABL forfeited any developed argument to treat claims differently because it did not contest representativeness in briefing |
| Whether claim 1 is patent-eligible under 35 U.S.C. § 101 | The claim is facially invalid as it claims an abstract mental process implemented on a generic computer | The claim recites a computer/system and thus is not abstract (system claims differ) | Affirmed: claim 1 is directed to an abstract mental process (routine comparing and rule application) implemented on generic computer functionality and is therefore ineligible under § 101 |
Key Cases Cited
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (software-implemented mental-step claims invalid under § 101)
- Gottschalk v. Benson, 409 U.S. 63 (1972) (abstract ideas and mental processes not patentable)
- Parker v. Flook, 437 U.S. 584 (1978) (process claims that merely implement abstract formulas are ineligible)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (claims involving laws of nature, abstract ideas, or mental processes require additional inventive concept beyond routine, conventional activity)
- Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012) (process claims using generic computer functions held ineligible)
- CLS Bank Int'l v. Alice Corp. Pty, 717 F.3d 1269 (Fed. Cir. 2013) (en banc) (analysis of abstract ideas and computer implementation in patent eligibility)
- In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (mental processes not patentable)
- In re Meyer, 688 F.2d 789 (C.C.P.A. 1982) (claims to mental processes ineligible)