The Federal Circuit Stays the Course in Patent Ineligibility for an Abstract Idea
February 27, 2019
In a precedential opinion issued on February 26, 2019, the Federal Circuit affirmed the District Court’s finding of patent ineligibility for a claim “directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data.”” University of Florida Research Foundation Inc. v General Electric Company et al (Fed. Cir. 2019).
The Court was first tasked with an argument from the University of Florida Research Foundation (UFRF) that sovereign immunity under the 11th amendment to the Constitution precluded subject matter jurisdiction for the 101 challenge despite the fact that the UFRF filed suit alleging patent infringement in the first place. Perhaps not surprisingly, Judge Moore was not persuaded (“At issue, then, is whether GE’s § 101 eligibility challenge is a defense to UFRF’s claim of infringement.”):
“[A] state waives its Eleventh Amendment immunity when it consents to federal court jurisdiction by voluntarily appearing in federal court,” as UFRF has here. Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111, 1124 (Fed. Cir. 2003) (citing Clark v. Bernard, 108 U.S. 436, 447 (1883)); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564–65 (Fed. Cir.1997) (“[T]he Eleventh Amendment applies to suits ‘against’ a state, not suits by a state.”).
Judge Moore continued, citing 35 U.S.C. § 282(b) (defenses for infringement):
Even if § 282 did not extend to a § 101 eligibility challenge, such a challenge would still be a defense to a claim of infringement.1 We and the Supreme Court have long treated § 101 eligibility as a “condition of patentability” alongside §§ 102 and 103.
Moving to the question of eligibility, Claim 1 of the asserted patent:
1. A method of integrating physiologic treatment data comprising the steps of:
receiving physiologic treatment data from at least two bedside machines;
converting said physiologic treatment data from a machine specific format into a machine independent format within a computing device remotely located from said bedside machines;
performing at least one programmatic action involving said machine-independent data; and
presenting results from said programmatic actions upon a bedside graphical user interface.
The steps of the method had been used manually for some time “to preserve patient information for administrative and research purposes.” The invention of the patent was purportedly to automate this method using a computer (“The ’251 patent “fails to provide any technical details for the tangible components, . . . instead predominately describ[ing] the system and methods in purely functional terms.””) thereby failing the first step in the Alice inquiry. Given this characterization of the patent and the invention claimed, it is not remarkable to see that Judge Moor agreed with the District Court that there was nothing more than that which was routine and conventional:
The ’251 patent claims recite the abstract idea of “collecting, analyzing, manipulating, and displaying data,” and the ’251 patent proposes using “a general-purpose computer” to carry it out. Id. [BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341] At 13:33–37. As BASCOM recognized, claims like these that “merely recite the abstract idea . . . along with the requirement to perform it on . . . a set of generic computer components” do not contain an inventive concept. 827 F.3d at 1350. “An inventive concept . . . cannot simply be an instruction to implement or apply the abstract idea on a computer.” Id. at 1349.