University of Florida Research Foundation, Inc. v. General Electric Company, Appeal No. 2018-1284 (Fed. Cir. Feb. 26, 2019)

The Court this week affirmed the Rule 12(b)(6) dismissal of an infringement lawsuit, finding that the claims of the asserted patent were directed to patent-ineligible subject matter under 35 U.S.C. § 101. The Court also considered the extent of sovereign immunity for state universities in patent infringement cases.

The plaintiff, University of Florida Research Foundation‎ (UFRF), had argued that the district court lacked subject matter jurisdiction over the case because it is immune as an arm of the State of Florida. The Court found that the district court did not lack subject matter jurisdiction to resolve the § 101 challenge. The Court recited that a state waives its sovereign immunity and consents to jurisdiction when appearing voluntarily in federal court, a waiver that extends not only to the cause of action but also “to any relevant defenses and counterclaims.” UFRF argued that GE’s § 101 challenge was not a “defense” to its infringement cause of action, relying on the Supreme Court’s decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017), in which SCOTUS found that laches was not an available defense within the six-year statute of limitations. The Federal Circuit rejected UFRF’s argument, relying on its own pre-SCA precedent finding that the “defenses” enumerated under 35 U.S.C. § 282(b)—which include “[i]nvalidity … on any ground specified in part II [of Title 35] as a condition for patentability”—include challenges under § 101. The Court distinguished SCA on the ground that while recognizing laches as a defense may conflict with the statutory limitations period, treating a § 101 eligibility challenge as a defense poses no such conflict with § 282. As such, UFRF’s sovereign immunity was waived with respect to the § 101 challenge when it consented to jurisdiction over its infringement claims.

The Court also affirmed the Rule 12(b)(6) dismissal on the merits. The asserted patent was directed to a method and system for “integrat[ing] physiologic data from at least one bedside machine,” with representative claim 1 reciting “converting … treatment data from a machine specific format into a machine independent format,” “performing at least one programmatic action” on the data, and “presenting results from said programmatic action upon a bedside … interface.” Applying the two-step framework articulated in Alice Corp. Party Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Federal Circuit first considered whether the claims were directed to a patent-ineligible concept. The Court found that they were, describing the patent as “a quintessential ‘do it on a computer’ patent” directed to “the abstract idea of collecting, analyzing, manipulating, and displaying data,” and collected precedent concerning similar patents which simply proposed automating existing pen and paper methodologies. Under the second Alice step, the Court further found that the patent contained no “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application. Because the claims “simply instruct the practitioner to implement the abstract idea on a generic computer,” the Court held them to be patent-ineligible under § 101.

The opinion can be found here.