Smartgene, Inc. v. Advanced Biological Laboratories, SA
2013 U.S. Dist. LEXIS 855
D.C. Cir.2013Background
- SmartGene sought declaratory judgments of invalidity, unenforceability, and non-infringement of two patents (786 and 988).
- Court granted partial summary judgment that the patents are invalid under 35 U.S.C. § 101.
- ABL moved for Rule 59(e) reconsideration; SmartGene moved to strike supporting declarations.
- Court denied reconsideration and granted SmartGene’s motion to strike the declarations.
- The opinion addresses whether the reconsideration motion was warranted and clarifies the scope of the invalidity ruling.
- Prometheus-based arguments were considered but rejected as not constituting a change in controlling law or sufficient basis for relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether all claims (including unasserted ones) were properly invalidated. | SmartGene challenged entire patents as invalid. | ABL contends only asserted claims were at issue; rest were not properly invalidated. | Denial of reconsideration; Court previously invalidated all claims based on representative-claim analysis. |
| Whether claim 1 was representative of all claims for §101 analysis. | Claim 1 of 786 is representative of all claims. | Different claim groups (method vs. system) may require different analyses. | Court rejected defendant’s argument; upheld representative-claim approach. |
| Whether Prometheus creates a change in controlling law warranting relief. | Prometheus supports reexamination of §101 analysis. | Deserves supplemental briefing as controlling law changed. | Prometheus not a change in controlling law for this case; no relief to reopen judgments. |
| Whether the 1500-page declarations should have been struck or considered. | Declarations were properly submitted in opposition to reconsideration. | Declarations should be considered or relief granted for new evidence. | Declarations and exhibits struck; motions decided on existing record. |
| Whether the court abused discretion by not allowing supplemental briefing after Prometheus. | No abuse, as Prometheus did not alter the controlling law. | Supplemental briefing warranted given new authority. | No error; no basis for reconsideration based on Prometheus. |
Key Cases Cited
- In re Meyer, 688 F.2d 789 (C.C.P.A.1982) (for §101, means-for claims not treated differently from method claims)
- Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir.2003) (claims may be grouped only if same validity issues and identical claim issues)
- Bristol-Myers Squibb Co. v. Kappos, 891 F. Supp. 2d 135 (D.D.C.2012) (motion for reconsideration standards and discretion)
- Diamond v. Diehr, 450 U.S. 175 (Supreme Court 1981) (instructive on §101 and transformation analysis)
- Gottschalk v. Benson, 409 U.S. 63 (Supreme Court 1972) (precedent guiding §101 analysis (machine-or-transformation context))
- Parker v. Flook, 437 U.S. 584 (Supreme Court 1978) (precedent guiding abstract ideas in §101 analysis)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., — U.S.—, 132 S. Ct. 1289 (2012) (Prometheus clarifies §101 analysis, not a change in controlling law here)
- In re Meyer, 688 F.2d 789 (C.C.P.A.1982) (not treated differently for §101 analysis between method and means-for claims)
- Oceana, Inc. v. Evans, 389 F. Supp. 2d 4 (D.D.C.2005) (motion for reconsideration standards; relief disfavored)
- Fresh Kist Produce, LLC v. Choi Corp., 251 F. Supp. 2d 138 (D.D.C.2003) (59(e) relief not a mere reargument of issues)
- Swedish Am. Hosp. v. Sebelius, 845 F. Supp. 2d 245 (D.D.C.2012) (discretionary nature of Rule 59(e) relief)
- Niedermeier v. Office of Max S. Baucus, 153 F. Supp. 2d 23 (D.D.C.2001) (extraordinary circumstances required for relief)
- Messerina v. Krakower, 439 F.3d 755 (D.C. Cir.2006) (Rule 59(e) relief standards)