Federal Circuit Affirms District Court Rule 12(b)(6) Dismissal For Lack Of Patent Eligible Subject Matter Where The Computer Components Were Described In “Purely Functional Terms”
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  • Federal Circuit Affirms District Court Rule 12(b)(6) Dismissal For Lack Of Patent Eligible Subject Matter Where The Computer Components Were Described In “Purely Functional Terms”
     
    03/05/2019
    On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida.  University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019).  The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.

    Section 101 of the United States patent laws prescribes the categories of inventions and discoveries that can properly be the subject of a patent:  “any new and useful process, machine, manufacture, or composition of matter.”  These categories are limited by judicially-created proscriptions against patenting abstract ideas, laws of nature, and natural phenomena.

    The Supreme Court, in its seminal Alice decision, set out a two-step framework for determining patent eligibility:  (1) determine whether the claim at issue is “directed to” a patent-ineligible concept (such as an abstract idea); and, if so, (2) consider the elements of the claim, both individually and as an ordered combination, to determine whether the claim contains an “inventive concept” sufficient to transform the claim into a patent-eligible application of the abstract idea.  Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).  To recite an “inventive concept,” the claims must do more than simply recite instructions to apply the abstract idea on a generic computer.

    Here, the University of Florida asserted that a large industrial company (the “Company”) infringed on a patent for integrating physiologic treatment data from bedside machines.  The representative claim recited:

    1. A method of integrating physiologic treatment data comprising the steps of:
    receiving physiologic treatment data from at least two bedside machines;
    converting said physiologic treatment data from a machine specific format into a machine independent format within a computing device remotely located from said bedside machines;
    performing at least one programmatic action involving said machine-independent data; and 
    presenting results from said programmatic actions upon a bedside graphical user interface.
    The district court granted the Company’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), holding that the claims were patent ineligible under the Alice test.  The court determined that the claims were directed to the abstract idea of “collecting, analyzing, manipulating and displaying data”—which the CAFC has repeatedly held to constitute an abstract idea—and that the claims failed to recite an inventive concept sufficient to save them from a patent-ineligibility determination.  

    The CAFC affirmed.  It found that the patent “is a quintessential ‘do it on a computer’ patent,” and simply describes automating “pen and paper methodologies” to conserve human resources and minimize human errors.  It further found that both the patent and its claims fail to “explain how” the particular computer components function or provide any technical details of the tangible components, describing the components in “purely functional terms.”  (emphasis in original).   And, in fact, the patent confirms there is no technological improvement:  it describes that “[t]he present invention . . . can be realized in a centralized fashion in one computer system or in a distributed” and states that “[a]ny kind of computer system or other apparatus adapted for carrying out the methods described herein” can be used.

    This decision again illustrates that the CAFC continues to take issue with patent claims (and corresponding specifications) that describe generic computer components in purely functional terms, and, as we discussed in our prior posts, see Shearman & Sterling LLP, Federal Circuit Emphasize Factual Nature of Section 101 Determinations, Need-to-Know Litigation Weekly, June 5, 2018, https://www.lit-ip.shearman.com/federal-circuit-emphasizes-factual-nature-of-section, and Shearman & Sterling LLP, Federal Circuit Affirms District Court 12(b)(6) Dismissal of “Wholly Functional Claims” as Patent Ineligible, Need-to-Know Litigation Weekly, January 8, 2019, https://www.lit-ip.shearman.com/federal-circuit-affirms-district-court-rule-12b6-dismissal-of-wholly-functional-claims, even in the wake of Aatrix, the CAFC will continue to affirm dismissals at the pleading stage.
    On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida.  University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019).  The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.

    Section 101 of the United States patent laws prescribes the categories of inventions and discoveries that can properly be the subject of a patent:  “any new and useful process, machine, manufacture, or composition of matter.”  These categories are limited by judicially-created proscriptions against patenting abstract ideas, laws of nature, and natural phenomena.

    The Supreme Court, in its seminal Alice decision, set out a two-step framework for determining patent eligibility:  (1) determine whether the claim at issue is “directed to” a patent-ineligible concept (such as an abstract idea); and, if so, (2) consider the elements of the claim, both individually and as an ordered combination, to determine whether the claim contains an “inventive concept” sufficient to transform the claim into a patent-eligible application of the abstract idea.  Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).  To recite an “inventive concept,” the claims must do more than simply recite instructions to apply the abstract idea on a generic computer.
     
    Here, the University of Florida asserted that a large industrial company (the “Company”) infringed on a patent for integrating physiologic treatment data from bedside machines.  The representative claim recited:
     
    1. A method of integrating physiologic treatment data comprising the steps of:
     
    receiving physiologic treatment data from at least two bedside machines;

    converting said physiologic treatment data from a machine specific format into a machine independent format within a computing device remotely located from said bedside machines;

    performing at least one programmatic action involving said machine-independent data; and

    presenting results from said programmatic actions upon a bedside graphical user interface.
     
    The district court granted the Company’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), holding that the claims were patent ineligible under the Alice test.  The court determined that the claims were directed to the abstract idea of “collecting, analyzing, manipulating and displaying data”—which the CAFC has repeatedly held to constitute an abstract idea—and that the claims failed to recite an inventive concept sufficient to save them from a patent-ineligibility determination. 
     
    The CAFC affirmed.  It found that the patent “is a quintessential ‘do it on a computer’ patent,” and simply describes automating “pen and paper methodologies” to conserve human resources and minimize human errors.  It further found that both the patent and its claims fail to “explain how” the particular computer components function or provide any technical details of the tangible components, describing the components in “purely functional terms.”  (emphasis in original).   And, in fact, the patent confirms there is no technological improvement:  it describes that “[t]he present invention . . . can be realized in a centralized fashion in one computer system or in a distributed” and states that “[a]ny kind of computer system or other apparatus adapted for carrying out the methods described herein” can be used.
     
    This decision again illustrates that the CAFC continues to take issue with patent claims (and corresponding specifications) that describe generic computer components in purely functional terms, and, as we discussed in our prior posts, see Shearman & Sterling LLP, Federal Circuit Emphasize Factual Nature of Section 101 Determinations, Need-to-Know Litigation Weekly, June 5, 2018, https://www.lit-ip.shearman.com/federal-circuit-emphasizes-factual-nature-of-section, and Shearman & Sterling LLP, Federal Circuit Affirms District Court 12(b)(6) Dismissal of “Wholly Functional Claims” as Patent Ineligible, Need-to-Know Litigation Weekly, January 8, 2019, https://www.lit-ip.shearman.com/federal-circuit-affirms-district-court-rule-12b6-dismissal-of-wholly-functional-claims, even in the wake of Aatrix, the CAFC will continue to affirm dismissals at the pleading stage. 

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