SmartGene, Inc. v. Advanced Biological Laboratories, SA et al.

Docket No. 2013-1186

January 24, 2014


Brief Summary: Patents for selecting medical treatment options using a computer found ineligible under 35 U.S.C. § 101 as providing nothing more than “doctors can and do perform in their heads”.

Summary: Advanced Biological Laboratories (ABL) appealed DC grant of SJ to SmartGene that it did not infringe ABL’s US 6,081,786 and 6,188,988 because the patents were ineligible under 35 U.S.C. § 101. The patents relate to methods “for guiding the selection of a therapeutic treatment regiment for a patient with a known disease or medical condition” by providing patient information to a computer having multiple “knowledge base[s]” having information on treatment regimens, expert rules, and advisory information, generating a ranked listing of treatment options, and generating “in said computing device advisory information”. The FC opinion first considered whether it had jurisdiction in this case and concluded that it did and that there was an “actual case or controversy” (MedImmune, US 2007). It then considered patentability and concluded that the DC was correct because, under CyberSource (FC 2011) and Mayo (US 2012), “section 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” (Supreme Court precedent indicates that section 101 covers neither ‘mental processes’…nor processes that merely invoke a computer…for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performed steps” (citing Gottschalk, US 1972 and Parker, US 1978). The panel noted that their “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” (“claim does not purport to identify new computer hardware”).  

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