Smartgene, Inc. v. Advanced Biological Lab.: Failure to Challenge Representative Claim at SJ Amounts to Waiver of Claim Specific 101 Analysis
By: Jesus Hernandez, Blog Editor/Contributor
|Title||Smartgene, Inc. v. Advanced Biological Lab., No. 2013-1186 (Fed. Cir. Jan. 24, 2014) (non-precedential).|
| Based on the failure of ABL’s briefing to contest SmartGene’s characterization of claim 1 of the ’786 patent as representative of all claims, the district court found “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” and, therefore, analyzed only [method] claim 1 of the ’786 patent. [ABL contends that the district court erred in invalidating simlarly worded system and Beauregard claims based solely on the analysis of the method claim.]|
Smartgene, Inc. at *5 (text added).
| It is well established that arguments that are not appropriately developed in a party’s briefing may be deemed waived.[…] We view the court’s ruling as essentially one that ABL forfeited any argument that any patent claims here are to be treated differently from claim 1 of the ’786 patent.|
Id. at *7.
| [T]his court [has] held that section 101 did 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. […] Claim 1 does no more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, to do what doctors do routinely. |
Id. at *7-8 (internal citations omitted, text added).
|Procedural History||SmartGene, Inc. brought this action against Advanced Biological Laboratories, SA, and ABL Patent Licensing Technologies, SARL (collectively, ABL), seeking a declaratory judgment that it did not infringe two of ABL’s patents, U.S. Patent Nos. 6,081,786 and 6,188,988, and that both patents were invalid. The district court granted summary judgment that all claims of both patents were ineligible for patent protection under 35 U.S.C. § 101. […]|
Smartgene, Inc. at *2 (internal citations omitted).
|Legal Reasoning (Lourie, Dyk, Taranto)|
|Claim 1 of the ’786 patent reads:||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 […]; a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen […]; a third knowledge base comprising advisory information […]; 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 pa- tient information and said expert rules.
Smartgene, Inc. at *2-3.
|Parallel claims of Different Statutory Classes||Claim 1 of the ’988 patent is nearly identical. […] Claim 23 in each patent claims “[a] system” rather than a method, but otherwise is similar in content. […] Claim 45 in each patent has similar content, but claims a “computer program product comprising a computer usable storage medium having computer readable program code means embodied in the medium.” […] |
Id. at *3 (internal citations omitted).
| Waiver of Different 101 Analysis for Different Statutory Claim Types|
|All Claims Put In Play by DJ Claimant||At the outset of this action, SmartGene’s complaint sought a declaratory judgment that the ’786 and ’988 patents, without limitation, were ineligible for patent protection. […] Although ABL counterclaimed for infringement of only claims 1 and 23 of each patent, SmartGene never narrowed the scope of its declaratory-judgment claims. When later moving for summary judgment, SmartGene expressly placed all claims at issue, asserting that “the patents-in-suit are facially invalid as directed to non-statutory subject matter under 35 U.S.C. § 101.” […] Thus, the district court did not err in addressing all claims of the ’786 and ’988 patents.|
Smartgene, Inc. at *6 (internal citations omitted)
|Patentee Failed to Rebut in Briefs||In its summary-judgment filings, SmartGene expressly asserted that claim 1 was representative and that any differences between the claims are immaterial under section 101, […] and ABL did not dispute that characterization in its briefing. […] During the summary-judgment oral argument, ABL alluded to “a different analysis as to the abstractness issue” between system and method claims. […] But the district court acted well within its discretion in concluding, as it explained on reconsideration, that such passing assertions did not amount to a developed argument for different treatment, especially in light of ABL’s complete failure to raise the issue in its briefing. |
Id. at *7.
| Claim Encompassed Abstract Idea|
|In three steps, claim 1 defines a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” […] The method (1) “provid[es] patient information to a computing device” having routine input, memory, look-up, comparison, and output capabilities and that (2) “generat[es] . . . a ranked listing of available therapeutic treatment regimens” and (3) “generat[es] ... advisory information for one or more therapeutic treatment regimens in said ranked listing.” […] Claim 1 places only very broad limitations on a “computing device”: it must contain—like a doctor’s mind—a set of “expert rules for evaluating and selecting” from a stored “plurality of different therapeutic treatment regimens,” as well as “advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens.” […]|
Smartgene, Inc. at *8 (internal citations omitted).
|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. 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.|
Id. at *9.
|For these reasons, the judgment of the district court is affirmed.|
Smartgene, Inc. at *10.
Image Attribution Statement: FIG. 1 of U.S. Pat. 6,081,786, available as a public domain image.