University of Florida Res. Found., Inc. (UFRF) v. General Electric Co. et al.


Docket No. 2018-1284

PROST, MOORE, WALLACH
February 26, 2019

Brief summary: UFRF found to have “waived sovereign immunity as to GE’s § 101 eligibility challenge”. DC grant of GE’s motion to dismiss based on its § 101 defense to infringement affirmed (e.g., the ‘251 patent only describes “the drivers…in purely functional terms” (Alice step two)).

Summary: UFRF appealed DC decision that the claims of US 7,062,251 directed to “[a] method of integrating physiologic treatment data” by “receiving physiologic treatment data from at least two bedside machines”, “converting” that data “into a machine independent format” with a remote “computing device”, “performing at least one programmatic action involving” that data, and graphically presenting the results. UFRF sued GE for infringement of the ‘251 claims, and GE successfully convinced the the DC that the claims are invalid under § 101. The FC panel first considered UFRF’s argument that the DC did not have subject matter jurisdiction since “UFRF, as an arm of the State of Florida…enjoys sovereign immunity under the Eleventh Amendment, and it has not waived that immunity to GE’s § 101 eligibility challenge.” The FC panel disagreed with UFRF, explaining that “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. (FC 2003); Vas-Cath, FC 2007)). The FC panel also disagreed with UFRF’s argument that § 101 is not a “condition of patentability” for the purposes of § 282 (defenses to infringement), explaining that “a § 101 eligibility challenge is a defense to a claim of infringement”. Therefore, the FC panel concluded, “GE’s § 101 eligibility challenge is a defense to UFRF’s claim” and “UFRF has waived sovereign immunity as to GE’s § 101 eligibility challenge” and the DC “had subject matter jurisdiction to hear that challenge.” The DC concluded under Alice (US 2014) step one that “the claims are directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data’” and that, under Alice’s step two, “the claims did not recite an inventive concept.” The FC panel determined that “the ‘251 patent proposes replacing the ‘pen and paper methodologies’ with ‘data synthesis technology’” (it “seeks to automate ‘pen and paper methodologies’ to conserve human resources and minimize errors”). Such claims, the FC panel explained, have been held to be “directed to abstract ideas” (Int. Ventures I, FC 2017; Elec. Power Grp., FC 2016). It also found that “[t]he ‘251 patent nowhere identifies, and we cannot see in the claims, any ‘specific improvement to the way computers operate’” as in Enfish (FC 2016) (e.g., “the ‘251 patent explains ‘the invention is not limited by the particular GUI or data entry mechanisms’”). UFRF argued the ‘251 claims are similar to those held eligible in Visual Memory (FC 2017), but the FC panel disagreed because the Visual Memory patent explained how its “enhancement to the computer memory system worked” while the ‘251 patent only describes “the drivers…in purely functional terms” (e.g., “facilitate data exchanges”) (In re TLI, FC 2016). And the FC panel was not convinced by UFRF’s comparison of the ‘251 claims to BASCOM (FC 2016) in which the FC “found an inventive concept” (i.e., “a technical improvement over prior art ways of filtering content”). “Here,” the FC panel concluded, “the claims do no ‘more than simply instruct the practicioner to implement the abstract idea…on a generic computer’” and are therefore “not patent eligible under § 101.” The DC grant of GE’s motion to dismiss was therefore affirmed.

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