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

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SMARTGENE, INC.,
Plaintiff-Appellee,
v.
ADVANCED BIOLOGICAL LABORATORIES, SA,
AND ABL
PATENT LICENSING TECHNOLOGIES,
SARL,
Defendants-Appellants.
______________________
2013-1186
______________________
Appeal from the United States District Court for the
District of Columbia in No. 08-CV-0642, Judge Beryl A.
Howell.
______________________
Decided: January 24, 2014
______________________
FREDERICK N. SAMUELS, Cahn & Samuels, LLP, of
Washington, DC, argued for plaintiff-appellee. With him
on the brief was MAURICE U. CAHN.
ROBERT R. SACHS, Fenwick & West, LLP, of San Fran-
cisco, California, argued for defendants-appellants. With
him on the brief were MICHAEL J. SACKSTEDER, DANIEL R.
BROWNSTONE, and JEFFREY V. LASKER. Of counsel on the
2 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB
brief was EDWARD W. GOLDSTEIN, Goldstein Law,
P.L.L.C., of Houston, Texas.
______________________
Before LOURIE, DYK, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
SmartGene, Inc. brought this action against Advanced
Biological Laboratories, SA, and ABL Patent Licensing
Technologies, SARL (collectively, ABL), seeking a declara-
tory judgment that it did not infringe two of ABL’s pa-
tents, U.S. Patent Nos. 6,081,786 and 6,188,988, and that
both patents were invalid. The district court granted
summary judgment that all claims of both patents were
ineligible for patent protection under 35 U.S.C. § 101. See
SmartGene, Inc. v. Adv. Biological Labs., SA, 852 F. Supp.
2d 42, 62 (D.D.C. 2012), reconsideration denied, 915 F.
Supp. 2d 69 (D.D.C. 2013). We affirm.
BACKGROUND
Each of the two patents here is entitled “Systems,
Methods and Computer Program Products for Guiding the
Selection of Therapeutic Treatment Regimens.” In each,
the key claims are independent Claims 1, 23, and 45,
which describe a method, a system, and a computer
program, respectively, for guiding the selection of a
treatment regimen for a patient with a known disease or
medical condition. Claim 1 of the ’786 patent reads:
1. A method for guiding the selection of a thera-
peutic 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 plu-
rality of different therapeutic treatment
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 3
regimens for said disease or medical con-
dition;
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 adviso-
ry information useful for the treatment of
a patient with different constituents of
said different therapeutic treatment regi-
mens; and
(b) generating in said computing device a ranked
listing of available therapeutic treatment regi-
mens 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 pa-
tient information and said expert rules.
’786 patent, col. 17, line 49, through col. 18, line 4. Claim
1 of the ’988 patent is nearly identical. See ’988 patent,
col. 17, line 53, through col. 18, line 12. Claim 23 in each
patent claims “[a] system” rather than a method, but
otherwise is similar in content. See ’786 patent, col. 19,
lines 22-45; ’988 patent, col. 23, lines 32-59. Claim 45 in
each patent has similar content, but claims a “computer
program product comprising a computer usable storage
medium having computer readable program code means
embodied in the medium.” See ’786 patent, col. 20, line
61, through col. 21, line 22; ’988 patent, col. 21, lines 16-
48. For reasons to be indicated, we need not be more
precise about the claims other than claim 1 of the ’786
patent.
In May 2008, SmartGene filed this action against
ABL, seeking a declaratory judgment that, among other
things, the two patents were ineligible for protection
4 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB
under section 101. ABL counterclaimed, asserting in-
fringement of Claims 1 and 23 of both patents. To estab-
lish that an actual controversy existed between the
parties, SmartGene’s complaint identified a prior lawsuit
by ABL against SmartGene, in which ABL’s complaint
alleged infringement of “at least claim 1 of each of the
’786 and ’988 Patents.” J.A. 59. That earlier infringe-
ment action, filed in the Eastern District of Texas, had
been dismissed for lack of personal jurisdiction before
SmartGene initiated this declaratory-judgment action.
The present case was stayed until September 2011 while
the Patent and Trademark Office reexamined the ’786
and ’988 patents on prior-art, but not section 101,
grounds. The PTO ultimately concluded that all of the
patents’ claims were patentable over the prior art pre-
sented during the reexaminations.
In December 2011, SmartGene moved for summary
judgment that “all of the claims” of the ’786 and ’988
patents are ineligible for a patent under section 101.
Mem. in Supp. of Partial Summ. J.at 1, SmartGene, Inc. v.
Adv. Biological Labs, SA, No. 08-CV-0642 (D.D.C. Dec. 12,
2011), ECF 47. Expressly asserting that “for the purpose
of the § 101 analysis, claim 1 of the ’786 patent is repre-
sentative of all of the claims of the patents-in-suit,”
SmartGene’s motion limited its elaboration of its argu-
ments for ineligibility to that claim. J.A. 381. In its
responsive briefing opposing summary judgment, ABL
never contested SmartGene’s characterization of claim 1
of the ’786 patent as representative of all claims of both
patents. Opp. to Mot. for Partial Summ. J., SmartGene,
No. 08-CV-0642 (D.D.C. Dec. 27, 2011), ECF 51. At the
oral argument on the summary-judgment motion, ABL
did argue that “system” claims require a different analy-
sis from “method” claims. See J.A. 2789-91 (“[F]or a
system claim, there is a little bit different analysis be-
cause claiming an actual system . . . makes it even less
abstract because it’s not just a method . . . it is even more
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 5
intimately connected to the computer, as it is the sys-
tem.”).
Based on the failure of ABL’s briefing to contest
SmartGene’s characterization of claim 1 of the ’786 patent
as representative of all claims, the district court found
“that the differences between the various method and
system claims within the patents-in-dispute are immate-
rial with respect to whether the patents constitute eligible
subject matter under 35 U.S.C. § 101” and, therefore,
analyzed only claim 1 of the ’786 patent. SmartGene, Inc.,
852 F. Supp. 2d at 45-46. The district court concluded
that the claim does “no more than describe . . . an abstract
mental process engaged in routinely, either entirely
within a physician’s mind, or potentially aided by other
resources in the treatment of patients.” Id. at 55. The
court held claim 1 of the ’786 patent, and hence all assert-
ed claims, “invalid” under section 101. Id. at 66.
ABL moved for reconsideration. The court denied the
motion. It again reiterated that ABL had not contested
the representativeness of claim 1 of the ’786 patent in its
papers opposing summary judgment and, even at the
argument on the motion, had not provided any reason for
distinguishing other claims from that one. SmartGene,
915 F. Supp. 2d at 75-76.
ABL appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
Review of a grant of summary judgment is de novo.
Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333,
1341-42 (Fed. Cir. 2013). Patent eligibility under section
101 is an issue of law. Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir.
2012).
6 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB
A
ABL contends that, even if claim 1 of the ’786 patent
is invalid, the district court erred in invalidating all
claims of the two patents on that basis. Neither of ABL’s
arguments to support that contention has merit.
First, SmartGene unambiguously moved for summary
judgment that all claims of the ’786 and ’988 patents—
not, as ABL argues, only claims 1 and 23 of both—were
ineligible under section 101. See SmartGene, 915 F.
Supp. 2d at 73-74 (“[ABL’s] assertions in this regard are
patently false . . . . SmartGene consistently asserted that
it was contesting the validity of all of the claims in both
the ’786 patent and the ’988 patent.”). At the outset of
this action, SmartGene’s complaint sought a declaratory
judgment that the ’786 and ’988 patents, without limita-
tion, were ineligible for patent protection. See J.A. 60-61.
Although ABL counterclaimed for infringement of only
claims 1 and 23 of each patent, SmartGene never nar-
rowed the scope of its declaratory-judgment claims. When
later moving for summary judgment, SmartGene express-
ly placed all claims at issue, asserting that “the patents-
in-suit are facially invalid as directed to non-statutory
subject matter under 35 U.S.C. § 101.” J.A. 366 (empha-
sis added); see also J.A. 374 (arguing in briefing accompa-
nying the summary-judgment motion that “all of the
claims of the patents-in-suit are invalid”). Thus, the
district court did not err in addressing all claims of the
’786 and ’988 patents.
We see no jurisdictional barrier to the district court’s
ruling on all of the claims. The eligibility of all claims
under section 101 presented a case or controversy. ABL
never argued that the district court lacked jurisdiction
over any of SmartGene’s claims. And ABL had sued
SmartGene in an earlier action, in Texas, alleging in-
fringement of both patents without limitation to particu-
lar claims. Given that complaint, we see no reason for
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 7
concluding that SmartGene failed to meet its “burden of
establishing the existence of an actual case or controver-
sy” as to all claims of both patents. MedImmune, Inc. v.
Genentech, Inc., 549 U.S. 118, 140 (2007).
Second, not only were all claims properly before the
district court on summary judgment, but the court could
properly rest its judgment on its analysis of claim 1 of the
’786 patent. In its summary-judgment filings, SmartGene
expressly asserted that claim 1 was representative and
that any differences between the claims are immaterial
under section 101, see J.A. 381, and ABL did not dispute
that characterization in its briefing. It is well established
that arguments that are not appropriately developed in a
party’s briefing may be deemed waived. See, e.g.,
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320 (Fed. Cir. 2006) (collecting cases). During the
summary-judgment oral argument, ABL alluded to “a
different analysis as to the abstractness issue” between
system and method claims. J.A. 2789-91. But the district
court acted well within its discretion in concluding, as it
explained on reconsideration, that such passing assertions
did not amount to a developed argument for different
treatment, especially in light of ABL’s complete failure to
raise the issue in its briefing. We view the court’s ruling
as essentially one that ABL forfeited any argument that
any patent claims here are to be treated differently from
claim 1 of the ’786 patent.
B
The district court correctly held that the claim 1
method falls outside the eligibility standards of section
101 as that provision has been construed. This conclusion
follows from CyberSource Corp. v. Retail Decisions, Inc.,
where, based on earlier precedents, this court held that
section 101 did 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
8 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB
in their heads. 654 F.3d 1366, 1373 (Fed. Cir. 2011); see
also In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989); In
re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982). As Cy-
berSource explains, those precedents rest on Supreme
Court decisions indicating that section 101 covers neither
“mental processes”—associated with or as part of a cate-
gory of “abstract ideas”—nor processes that merely invoke
a computer and its basic functionality for implementing
such mental processes, without specifying even arguably
new physical components or specifying processes defined
other than by the mentally performable steps. See
Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972); Parker v.
Flook, 437 U.S. 584, 589 (1978).
Those precedents cover this case. Claim 1 does no
more than call on a “computing device,” with basic func-
tionality for comparing stored and input data and rules,
to do what doctors do routinely. In three steps, claim 1
defines a “method for guiding the selection of a therapeu-
tic treatment regimen for a patient with a known disease
or medical condition.” ’786 patent, col. 17, lines 49-51.
The method (1) “provid[es] patient information to a com-
puting device” having routine input, memory, look-up,
comparison, and output capabilities and that (2) “gen-
erat[es] . . . a ranked listing of available therapeutic
treatment regimens” and (3) “generat[es] . . . advisory
information for one or more therapeutic treatment regi-
mens in said ranked listing.” Id. at col. 17, line 52,
through col. 18, line 3. Claim 1 places only very broad
limitations on a “computing device”: it must contain—like
a doctor’s mind—a set of “expert rules for evaluating and
selecting” from a stored “plurality of different therapeutic
treatment regimens,” as well as “advisory information
useful for the treatment of a patient with different con-
stituents of said different therapeutic treatment regi-
mens.” Id. at col. 17, lines 54-64.
Like the processes claimed in Benson, the process of
claim 1 “can be . . . performed without a computer” or,
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 9
alternatively, “can be carried out in existing computers
long in use, no new machinery being necessary.” 409 U.S.
at 67. The claim does not purport to identify new com-
puter hardware: it assumes the availability of physical
components for input, memory, look-up, comparison, and
output. Nor does it purport to identify any steps beyond
those which doctors routinely and consciously perform.
Our ruling is limited to the circumstances presented here,
in which every step is a familiar part of the conscious
process that doctors can and do perform in their heads.
The Supreme Court’s post-CyberSource decision in
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289 (2012), reinforces the application of Cyber-
Source to decide the present case. The Supreme Court in
Mayo, though addressing a case involving the “law of
nature” exclusion from section 101, recognized that “men-
tal processes” and “abstract ideas” (whatever may be the
precise definition and relation of those concepts) are
excluded from section 101. See 132 S. Ct. at 1289, 1293,
1297-98 (quotation marks omitted). Whatever the bound-
aries of the “abstract ideas” category, the claim at issue
here involves a mental process excluded from section 101:
the mental steps of comparing new and stored infor-
mation and using rules to identify medical options.
Mayo demanded that, when a claim involves an ab-
stract idea (or, in Mayo itself, a law of nature), eligibility
under section 101 requires that the claim involve
“enough” else—applying the idea in the realm of tangible
physical objects (for product claims) or physical actions
(for process claims)—that is beyond “well-understood,
routine, conventional activity.” 132 S. Ct. at 1294, 1298,
1299. The claim here does not do so. It calls on a com-
puter to do nothing that is even arguably an advance in
physical implementations of routine mental information-
comparison and rule-application processes. In this con-
text, the concern about preempting public use of certain
10 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB
kinds of knowledge, emphasized in Mayo, is a grave one.
See id. at 1301-02.
Our decisions since Mayo do not undermine Cyber-
Source or its application here. None of those decisions
calls for validation of a claim, like the present one, to
familiar mental steps performed by or with a computer,
without more of significance.
Both the court’s decision in Bancorp, supra, and its
decision in CLS Bank Int'l v. Alice Corp. Pty, 717 F.3d
1269 (Fed. Cir. 2013) (en banc), cert. granted, 134 S. Ct.
734 (2013), insofar as they involved process claims like
the claim here at issue, invalidated certain claims—which
involved use of a computer, not defined other than by its
function, to perform familiar steps of creating, recording,
and altering of certain intangible entities (contracts such
as insurance policies or financial obligations). Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336 (Fed. Cir. 2013), is similar. Ultramercial, Inc.
v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013), reversed an
invalidation on a motion to dismiss, but the process
claimed there was materially different from the one at
issue here. Although the parties did not dispute the
involvement of an “abstract idea”—getting a kind of
confirmation that a viewer has watched advertising as a
precondition to sending the viewer desired program-
ming—the process at issue in Ultramercial did not involve
“mere mental steps.” See 722 F.3d at 1349 n.2. And the
claims involved a recitation of specifics of computer net-
works beyond what the present case involves. See id. at
1350.
CONCLUSION
For these reasons, the judgment of the district court is
affirmed.
AFFIRMED