University of Florida Research v. General Electric Company
916 F.3d 1363
Fed. Cir.2019Background
- UFRF (assignee of U.S. Patent No. 7,062,251) sued GE in 2017 for patent infringement alleging a system/method that integrates physiologic data from bedside machines.
- GE moved to dismiss under Rule 12(b)(6), arguing the patent claims are directed to ineligible subject matter under 35 U.S.C. § 101.
- The district court granted GE’s motion, finding the claims directed to the abstract idea of collecting/analyzing/manipulating/displaying data and lacking an inventive concept under Alice.
- UFRF argued the district court lacked jurisdiction because, as an arm of Florida, it retained Eleventh Amendment sovereign immunity and had not waived it for GE’s § 101 challenge.
- The Federal Circuit held (1) GE’s § 101 challenge is a defense to infringement and UFRF waived sovereign immunity by suing in federal court, and (2) the ’251 patent claims are ineligible under § 101 and affirmed the dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether UFRF retained Eleventh Amendment immunity from GE’s § 101 challenge | UFRF: as a state arm it has sovereign immunity and did not waive it for GE’s eligibility defense | GE: bringing an infringement suit waives immunity to defenses including § 101; § 282 covers eligibility defenses | Held: UFRF waived immunity by suing; § 101 challenge is a defense to infringement and district court had jurisdiction |
| Whether § 101 eligibility is a defense available under 35 U.S.C. § 282 | UFRF: § 282’s “conditions for patentability” cover §§ 102/103 but not § 101 | GE: § 282 defenses include § 101; Dealertrack supports inclusion; longstanding practice treats § 101 as a condition of patentability | Held: § 101 is a defense to infringement; Dealertrack and precedent support inclusion; SCA Hygiene does not undermine this point |
| Whether the ’251 patent claims are patent-eligible under Alice | UFRF: system improves computer function by converting machine-specific data to a machine-independent format remotely; remote conversion and drivers provide inventive concept | GE: claims are a generic computer implementation of an abstract idea (automating pen-and-paper data collection/display); drivers and conversion are described functionally and lack technical detail | Held: Claim 1 (representative) is directed to the abstract idea of collecting/analyzing/manipulating/displaying data (Alice step 1) and lacks an inventive concept (Alice step 2); claims are ineligible |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (establishing two-step framework for § 101 analysis)
- Dealertrack, Inc. v. Huber, 674 F.3d 1315 (holding § 282 defenses include § 101 challenges)
- SCA Hygiene Prods. v. First Quality Baby Prods., 137 S. Ct. 954 (equitable laches not available within statutory limitations period)
- Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376 (waiver of Eleventh Amendment by voluntary federal appearance extends to defenses)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (claims improve computer functioning can be non-abstract)
- BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (inventive concept found in specific remote arrangement with customizable features)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (§ 101 precedent treating eligibility as condition of patentability)
- Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (eligible claims that provided specific technical improvements and detailed implementation)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (claims directed to collecting, analyzing, and displaying information are abstract)
- In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (claims described in purely functional terms fail § 101)