Earlier this week, I argued before the Federal Circuit on behalf of my client Advanced Biological Laboratories (ABL) in SmartGene v. ABL. This is, as far as I can determine, the first time the Federal Circuit has addressed the patent eligibility of an expert system. Appearing before Judges Lourie, Dyk and Taranto, I argued that the patents, U.S. 6,081,786 and U.S. 6,188,988, were not merely “mental steps plus a computer” by claiming a computer system having three distinct knowledge databases.

I made several arguments that I have not seen presented to the court before. First, I argued that this particular limitation was found by the examiner to be distinctive over prior art expert systems and is thus evidence that the limitation is “meaningful,” since it showed that there were other expert systems that provided the same abstract idea but which did not implement this feature. In the “real world,” this meant that the claims did not preempt all “practical applications” of the abstract idea of evaluating and considering treatment regimens for patients.   

Second, I argued that the patent examiner’s classification of the patent into class 706/924 for medical expert systems was evidence that the person of ordinary skill in the art—the “relevant audience” in Prometheus’ language—was a computer scientist and not a physician, and thus the claims must be read from that perspective, not as instructions to a doctor. If the PHOSITA was a doctor, the examiner would have classified the invention into one of the medical procedure classes, such as class 129 or class 600. Given that, the claims must be read from the perspective of a computer scientist, who would understand that they recite a computer system, not mental steps of a doctor.

A recording of the oral argument is here. Copies of the parties' appeal briefs are here.