SmartGene, Inc. v. Advanced Biological Laboratories, SA (Fed. Cir. 2014)

by McDonnell Boehnen Hulbert & Berghoff LLP

SmartGeneWhile non-precedential, this recent Federal Circuit decision further illustrates the Court's thinking with regard to the patent-eligibility of computer-implemented inventions under 35 U.S.C. § 101, and provides a reminder about the importance of procedural issues in § 101 cases.

SmartGene filed a declaratory judgment action against the defendants ("ABL"), alleging non-infringement and invalidity of U.S. Patent Nos. 6,081,786 and 6,188,988, both owned by ABL.  On summary judgment, the District Court found both patents invalid under § 101.  A Federal Circuit panel consisting of Judges Lourie, Dyk, and Taranto affirmed.  Judge Lourie was the author of the contentious en banc CLS Bank v. Alice Corp. plurality concurrence that is currently under review by the Supreme Court, and Judge Dyk joined him in that opinion.  Judge Taranto, who wrote the present opinion, began his tenure at the Federal Circuit after the en banc Court heard oral arguments for CLS Bank.

Each patent includes independent claims directed to a method, a system, and a computer readable medium, respectively, "for guiding the selection of a treatment regimen for a patient with a known disease or medical condition."  In December 2011, SmartGene moved for summary judgment under § 101, stating that that "for the purpose of the § 101 analysis, claim 1 of the '786 patent is representative of all of the claims of the patents-in-suit."  The District Court granted the motion based solely on its analysis of this claim, stating that "the differences between the various method and system claims within the patents-in-dispute are immaterial with respect to whether the patents constitute eligible subject matter under 35 U.S.C. § 101."

ABL never contested this grouping of the claims in its responsive brief.  In oral argument against summary judgment, however, ABL attempted to rectify this omission by noting that "claiming an actual system . . . makes it even less abstract because it's not just a method . . . it is even more intimately connected to the computer."  But the District Court held firm, based on ABL's failure to contest the representativeness of claim 1 in its brief, as well as ABL's apparently non-persuasive oral arguments.

ABL appealed both the District Court's grouping of the claims in its § 101 analysis, and the outcome of this analysis.

Turning first to the grouping of the claims, the Federal Circuit quickly dismissed ABL's contentions.  Judge Taranto wrote that "[i]t is well established that arguments that are not appropriately developed in a party's briefing may be deemed waived."  Consequently, the District Court acted within its discretion to rule that "ABL forfeited any argument that any patent claims here are to be treated differently from claim 1 of the '786 patent."

Moving to the substantive § 101 issue, the Federal Circuit once again upheld the District Court's position.  The claim at issue recites:

1.    A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:
    (a)  providing patient information to a computing device comprising:
        a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;
        a second knowledge base comprising a plurality of expert rules for evaluating and  selecting a therapeutic treatment regimen for said disease or medical condition;
        a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens;
    (b)  generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and
    (c)  generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

Notably, all steps of the method either require the involvement of a computing device, or are performed by the computing device.  Nonetheless, the Federal Circuit still found that the claim was directed to a patent-ineligible mental process.

Leaning heavily on the reasoning in CyberSource Corp. v. Retail Decisions, Inc., Judge Taranto wrote "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."  Also echoing Justice Breyer in Mayo v. Prometheus, Judge Taranto found that each step of claim 1 involved "well-understood, routine, conventional activity previously engaged in by researchers in the field."

Particularly, in Judge Taranto's view, step (a) was directed to "routine input, memory, look-up, comparison, and output capabilities," step (b) was directed to generating "a ranked listing of available therapeutic treatment regimens, and step (c) was directed to generating "advisory information for one or more therapeutic treatment regimens in said ranked listing."  Consequently, he found that, without citing to any evidence or explaining why, these steps were routinely and consciously performed by doctors.  As a result, he found claim 1 to recite "a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options."

This decision, which I again emphasize is non-precedential, is another illustration of the Federal Circuit's § 101 reasoning post-Mayo and post-CLS Bank, and of the Court's current willingness to disregard the non-abstractness of general-purpose computer hardware when undertaking such reasoning.  However, a further issue is hidden within the subtext of this case.

The alleged "mental process" of claim 1 is more than a series of purely mental steps.  For the claimed invention to be useful, a doctor would have to access a "knowledge base" of different therapeutic treatment regimens, and then produce a "ranked listing of available therapeutic treatment regimens."  Thus, it is implicit that the Federal Circuit considers "mental processes" to include steps that may require looking information up in a book or a database, and perhaps using pencil and paper to produce a result.

But even if the breadth of claim 1 permits such a reading, the Court's § 101 "mental process" jurisprudence has essentially become a patent-eligibility bar on any computer-implemented algorithm that could conceivably be performed with pencil and paper, no matter how long it takes, how complicated, or how error-prone.  In today's "big data" systems, billions of data entries can be received, processed, analyzed, and used to draw conclusions.  It would take an army of humans thousands, or in some cases millions, of years to perform the same steps that could be performed in seconds, minutes, or hours by a modern cloud-computing system.

As just one example, and Netflix are two entities that use recommendation engines to suggest to their users what media and products those users might want to purchase.  These suggestions are often based on the consumption habits of other users (e.g., using logic such as "people who buy product A also buy product B").  These systems often require a large amount of data (much more than one person could hold in his or her head or organize on paper) and a large amount of computing power to make useful recommendations.  Thus, without being computer-implemented, such recommendation engines would not exist.  And yet, method claims drawn to a recommendation engine operating on a general-purpose computer would likely be subject to § 101 challenges.

Judge Lourie's CLS Bank concurrence sets forth this problematic reasoning:  "At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could.  Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility."  Nonetheless, accelerating calculations has enabled new technologies that drive the information economy.

One of aspect of innovation is to make products and services faster, cheaper, and better.  The patent system is intended to incentivize individuals and organizations to publically disclose such inventions, and as a result receive a limited property right thereover.  A broad exclusion of computer-implemented "mental processes" via § 101 is illogical and disregards the fundamental tradeoff on which the system is based.

SmartGene, Inc. v. Advanced Biological Laboratories, SA (Fed. Cir. 2014)
Nonprecedential disposition
Panel: Circuit Judges Lourie, Dyk, and Taranto
Opinion by Circuit Judge Taranto


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.