Smartgene, Inc. v. Advanced Biological Laboratories, Sa
852 F. Supp. 2d 42
D.D.C.2012Background
- SmartGene, Inc. sought declaratory judgment of invalidity, non-infringement, and unenforceability of U.S. Patent Nos. 6,081,786 and 6,188,988.
- Patents pertain to systems, methods, and computer programs for guiding therapeutic treatment regimens for patients with known diseases, using data inputs, knowledge bases, and ranked regimens with advisory information.
- The patents share the same specifications and teach an interactive, computerized program assisting physicians in selecting treatments.
- A stay occurred while PTO reexaminations were conducted; the PTO ultimately found all claims patentable over prior art, without addressing § 101 subject matter eligibility.
- SmartGene moved for partial summary judgment contending § 101 ineligibility; the court held § 101 threshold analysis disfavors the patents.
- The court concluded the claims are ineligible subject matter and dismissed the case, with all remaining claims and counterclaims moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the patents eligible under 35 U.S.C. §101? | SmartGene contends the claims claim abstract ideas and mental processes not patentable. | ABL argues the claims describe an interactive system and computer program aiding physicians, satisfying eligibility. | Patents are not patentable under §101; invalid. |
| Do the claims satisfy the machine-or-transformation (MOT) test? | SmartGene asserts no meaningful machine or transformation limits, merely mental steps. | ABL argues the invention ties to a computing device and databases, fulfilling MOT. | Claims fail both MOT prongs; not patentable. |
| Do § 101 considerations override PTO reexamination deference? | Not explicit in the record; reexamination does not address §101, so §101 must be evaluated anew. | PTO proceedings are not dispositive of §101; patent eligibility remains a separate threshold issue. | §101 threshold analysis governs; PTO findings do not trump §101. |
Key Cases Cited
- Diamond v. Diehr, 450 U.S. 175 (1981) (integration of a formula with other steps can render a process patentable)
- Gottschalk v. Benson, 409 U.S. 63 (1972) (mathematical algorithms preempting basic tools are not patentable)
- Parker v. Flook, 437 U.S. 584 (1978) (post-solution activity cannot make unpatentable abstract ideas patentable)
- Bilski v. Kappos, 561 U.S. 593 (2010) (MOT test is a useful guidance but not the only test for §101)
- Prometheus Labs., Inc. v. Mayo Collaborative Servs., 132 S. Ct. 1289 (2012) (natural law claims unpatentable unless the claim adds significant further inventive steps)
- In re Meyer, 688 F.2d 789 (1982) (claims reciting a mathematical algorithm may be unpatentable when they mirror mental steps)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011) (data manipulation claims can be non-patentable abstract ideas when performed in the mind)