Federal Circuit Holds Computer-Implemented Method Claims Invalid Under Section 101

04 February 2014 PharmaPatents Blog

Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of patent eligibility jurisprudence. Viewed in that light, this case could reflect the court’s confidence with at least the “abstract idea” category of § 101 issues, at least in the context of computer-implemented method claims for performing conventional mental steps.

The Patents at Issue

The patents at issue were ABL’s U.S. Patent 6,081,786 and U.S. Patent 6,188,988, directed to “Systems, Methods and Computer Program Products for Guiding the Selection of Therapeutic Treatment Regimens.” The Federal Circuit discussed claim 1 of the ‘786 patent as representative:

1. A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:
(a) providing patient information to a computing device comprising:
a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;
a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;
a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and
(b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and
(c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

In addition to computer-implemented method claims, the patents also include parallel claims reciting a “system” or a “computer program product comprising a computer usable storage medium having computer readable program code means embodied in the medium.”

The District Court Proceedings

SmartGene brought a declaratory judgment action seeking a judgment that the patents were invalid and not infringed. As summarized by the Federal Circuit, declaratory judgment jurisdiction was based on an actual controversy between the parties, stemming from earlier litigation that had been dismissed for lack of personal jurisdiction. The Federal Circuit also noted that the district court litigation was stayed while the USPTO conducted reexaminations of the patents, which were upheld over the prior art cited in the reexamination proceedings.

The district court granted summary judgment of invalidity, based on its determination that the claims were invalid for failing to satisfy the patent eligibility requirement of 35 USC § 101. In particular, treating claim 1 of the ‘786 patent as representative, the district court found that the claim does “no more than describe . . . an abstract mental process engaged in routinely, either entirely within a physician’s mind, or potentially aided by other resources in the treatment of patients.”

The Federal Circuit Decision

The Federal Circuit affirmed the district court decision, in a non-precedential decision authored by Judge Taranto and joined by Judge Lourie and Judge Dyk.

Method Claim 1 of the ‘786 Patent

The panel decision appears to rest largely on the Federal Circuit’s 2011 decision in CyberSource Corp. v. Retail Decisions, Inc., which it cites for the following proposition:

[S]ection 101 [does] not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads.

Regarding claim 1, the panel notes:

Like the processes claimed in Benson, the process of claim 1 “can be . . . performed without a computer” or, alternatively, “can be carried out in existing computers long in use, no new machinery being necessary.” …. The claim does not purport to identify new computer hardware: it assumes the availability of physical components for input, memory, look-up, comparison, and output. Nor does it purport to identify any steps beyond those which doctors routinely and consciously perform.

The panel also invokes the Supreme Court decision in Mayo v. Prometheus:

 The Supreme Court in Mayo, though addressing a case involving the “law of nature” exclusion from section 101, recognized that “mental processes” and “abstract ideas” (whatever may be the precise definition and relation of those concepts) are excluded from section 101. …. Whatever the boundaries of the “abstract ideas” category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.

The panel particularly found claim 1 to be lacking the “enough” more required in Mayo v. Prometheus:

Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.” …. The claim here does not do so.

 The panel also cited preemption concerns:

 [The claimed method] calls on a computer to do nothing that is even arguably an advance in physical implementations of routine mental information comparison and rule-application processes. In this context, the concern about preempting public use of certain kinds of knowledge, emphasized in Mayo, is a grave one.

 The panel distinguished Federal Circuit decisions since Mayo that might appear inconsistent, noting:

 Our ruling is limited to the circumstances presented here, in which every step is a familiar part of the conscious process that doctors can and do perform in their heads.

 The System and Computer Program Claims

Although this case treats the system and computer program claims together with the computer-implemented method claims, the panel did so without addressing whether system claims should, in principle, be treated differently than method claims. (This is one of the many questions left undecided by the Federal Circuit’s 2013 decision in CLS Bank Int’l v. Alice Corp. Pty., which is now before the Supreme Court.) Rather, SmartGene asserted that claim 1 of the ‘786 patent was representative of all claims and, the Federal Circuit found, “ABL did not dispute that characterization in its briefing.” Thus, the court determined that “ABL forfeited any argument that any patent claims here are to be treated differently from claim 1 of the ’786 patent.”

The Limitations of Reexamination and Inter Partes Review

This case illustrates the limitations of reexamination and inter partes review proceedings. By statute, only prior art issues can be raised in those USPTO proceedings. While post grant review proceedings are not so limited, only patents examined under the AIA version of 35 USC § 102 and “Covered Business Method” patents are subject to Post Grant Review. Thus, the only way to invalidate the bulk of patents in force today under § 101 is through a district court proceeding.

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