Less than two weeks after the U.S. Supreme Court issued Mayo Collaborative Services v. Prometheus Laboratories, Inc., ruling that methods for determining an optimal drug dosage to treat certain autoimmune diseases were not patent eligible, a federal court in the District of Columbia similarly found that claims for “Systems, Methods and Computer Program Products for Guiding the Selection of Therapeutic Treatment Regimens” are patent-ineligible. SmartGene, Inc. v. Advanced Biological Labs., SA, No. 1:08-cv-00642-BAH (U.S. Dist. Ct., D.D.C., decided March 30, 2012). So ruling, the court granted the plaintiff’s motion for partial summary judgment and dismissed the remaining claims and counterclaims.
At issue were patents for “an interactive, computerized program for guiding the selection of therapeutic treatment regimens for a patient based on input provided by a physician.” The parties’ dispute began with the patent holder, a Luxembourg-based company, filing an infringement action in a Texas federal court which dismissed the matter for lack of personal jurisdiction. Thereafter, the alleged infringer filed this action seeking a declaratory judgment of non-infringement, patent invalidity and patent unenforceability. These proceedings were stayed while the U.S. Patent and Trademark Office (USPTO) conducted concurrent patent validity reexaminations and ultimately concluded that the patents-in-dispute were patentable.
Because the reexamination proceeding did not include consideration of whether the claims were patent eligible under 35 U.S.C. § 101, and, indeed, USPTO cannot review subject matter eligibility during a reexamination proceeding, the court did not defer to USPTO’s conclusion. Exploring U.S. Supreme Court decisions, including Prometheus, that addressed patents “directed to abstract ideas and mental processes,” the court agreed with the alleged infringer that the patents-in-dispute are “directed to nothing more than a mental process in which a person, e.g., a physician, engages when determining a treatment for a patient suffering from a disease or a medical condition.” The court also concluded that the patents were invalid under the machine-or-transformation test. According to the court, that the method could speed up a decisionmaking process was insufficient to make what was simply an abstract mental process patent eligible.