SmartGene, Inc. v. Advanced Biological Lab.

The U.S. Court of Appeals for the Federal Circuit, in a decision providing a glimpse into a panel’s post-Alice position with regard to patent-eligibility of computer-implemented inventions (under 35 U.S.C. § 101), determined that patent claims directed to “a method, a system, and a computer program, respectively, for guiding the selection of a treatment regimen for a patient with a known disease or medical condition” was not patent eligible.  SmartGene, Inc. v. Advanced Biological Lab., Case No. 13-1186 (Fed. Cir., Jan. 24, 2014) (Taranto, J.) (non-precedential).

In the present matter, SmartGene brought an action against Advanced Biological Laboratories and ABL Patent Licensing Technologies (collectively, ABL), seeking a declaratory judgment that it did not infringe two of ABL’s patents and that both patents were invalid.

Both ABL patents include independent claims directed to a method, a system and a computer-readable medium, respectively, “for guiding the selection of a treatment regimen for a patient with a known disease or medical condition.”  SmartGene moved for summary judgment on the issue of patent eligibility, asserting that that “for the purpose of the § 101 analysis, claim 1 of … is representative of all of the claims of the patents-in-suit.”  Notably, each step of claim 1 is tied to a “computing device.”  The district court granted the motion based solely on its analysis of claim1, explaining that “the differences between the various method and system claims within the patents-in-dispute are immaterial with respect to whether the patents constitute eligible subject matter under 35 U.S.C. § 101.”  ABL appealed both the grouping of the claims in the district court analysis, and the eligibility decision.

The Federal Circuit panel affirmed, both with regard to the representative claim grouping and patent-eligibility. Notwithstanding the recitation of a computing device, the Federal Circuit determined that the claims covered only “mental steps of comparing new and stored information and using rules to identify medical options.”   The Court explained that the computing device recitation was only invoked to perform its basic functionality of comparing the stored and input data and rules.  The panel cited the Supreme Court Mayodecision (IP Update, Vol. 14, No. 6), explaining that if a claim involves an abstract idea, the claim must include enough that is beyond well-understood, routine, conventional activity to be patent-eligible.  Here, the panel concluded that the claim did not meet the requirement of Mayo since the recited computer did not even arguably advance the physical implementations of routine mental information-comparison and rule-application processes.  Thus, the Federal Circuit found the claim was directed to a patent-ineligible mental process.

Practice Note:  The Federal Circuit’s en banc decision in Alice is now pending at the Supreme Court (IP Update, Vol. 16, No. 12).  A decision is expected this term.