Smartgene, Inc. v. Advanced Biological Laboratories, Sa ( 2012 )


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  •                                 UNITED STATES DISTRICT COURT
    FOR THE DISTRICT OF COLUMBIA
    SMARTGENE, INC.,
    Plaintiff,
    v.
    Civil Action No. 08-00642 (BAH)
    ADVANCED BIOLOGICAL                                          Judge Beryl A. Howell
    LABORATORIES, SA, et al.,
    Defendants.
    MEMORANDUM OPINION
    Plaintiff SmartGene, Inc., a North Carolina corporation, brought this lawsuit against
    Defendant Advanced Biological Laboratories, SA, a company with its principal place of business
    in Luxembourg, seeking declaratory judgment as to the invalidity, unenforceability, and
    SmartGene’s non-infringement of 
    U.S. Patent No. 6,081,786
     (the “786 patent”) and 
    U.S. Patent No. 6,188,988 B1
     (the “988 patent”) (collectively, the “patents-in-dispute”). After prolonged
    litigation, including a stay of proceedings of two and a half years, SmartGene filed a Motion for
    Partial Summary Judgment, contending that the “patents-in-dispute” are facially invalid under 
    35 U.S.C. § 101
     of the Patent Act because the subject matter is ineligible for patent protection. 1
    Defendants, Advanced Biological Laboratories, SA (“ABL SA”) and ABL Patent Licensing
    1
    SmartGene stated at the March 9, 2012 Motions Hearing that the Motion was framed as a Motion for “Partial”
    Summary Judgment because the Motion deals only with the validity of the patents-in-dispute and does not address
    all disputed claims. See Motions Hearing Transcript (“Tr”) (Rough), Mar. 9, 2012, at 9:30, 42:23-43:1; 43:6-12
    (The parties have not requested formal transcripts from the court reporter. Accordingly, the Court’s citations to
    transcripts are from the court reporter’s rough draft of the proceedings.). No matter the styling of the pending
    Motion as a “partial” Motion for Summary Judgment, grant of this Motion is dispositive in this matter since the
    validity of the patents-in-dispute is the sine qua non for all the claims and counterclaims.
    1
    Technologies, SARL (“ABL PLT”) (collectively “ABL”) 2, oppose the Motion for Partial
    Summary Judgment, arguing that the patents-in-dispute constitute eligible subject matter under
    
    35 U.S.C. § 101
    . For the reasons explained below, SmartGene’s Motion for Partial Summary
    Judgment is granted and this case is dismissed.
    I.      FACTUAL AND PROCEDURAL BACKGROUND
    A.       The Patents
    The patents at stake in this dispute are Patent Nos. 6,081,786 (the “786 patent”) and
    6,188,988 B1 (the “988 patent”), of which the defendants are the undisputed owners. Compl. ¶¶
    7-8. 3 The ‘786 patent application was filed with the United States Patent and Trademark Office
    (“PTO”) on April 1, 1999, and the patent issued on June 27, 2000. See LCvR 7(h) Statement of
    Material Facts in Support of Pl.’s Mot. for Partial Summ. J. at ¶ 4. The application for the ‘988
    patent, considered a “continuation” of the application for the ‘786 patent, was filed on March 10,
    2000, and the patent issued on February 13, 2001. 
    Id. at ¶ 6
    .
    Both patents are entitled “Systems, Methods and Computer Program Products for
    Guiding the Selection of Therapeutic Treatment Regimens,” and relate “to a system, method, and
    computer program for guiding the selection of therapeutic treatment regimens for complex
    disorders . . . by ranking available treatment regimens and providing advisory information.”
    Defs.’ Mem. in Opp. to Mot. for Partial Summ. J. (“Defs.’ Mem.”), ECF No. 50, at 1-2. Both
    patents-in-dispute are based on the same patent specifications and disclosures, and relate to
    methods (i.e., process) and systems for an interactive, computerized program for guiding the
    2
    On November 23, 2011, the Court directed that ABL PLT be joined as a defendant in this case pursuant to Federal
    Rule of Civil Procedure 25(c). See Order, ECF No. 43. The Court directed that the party be joined in order to
    facilitate conduct of the case, because ABL PLT appears to have received rights originally belonging to ABL SA,
    not because there are distinct, substantive claims against ABL PLT. See Minute Order (Jan. 3, 2012).
    3
    The operative complaint, and the one cited throughout this Opinion, is the First Amended Complaint filed on May
    20, 2008. See ECF No. 4.
    2
    selection of therapeutic treatment regimens for a patient based on input provided by a physician.
    See Pl.’s Mem. in Support of Mot. for Partial Summ. J. (“Pl.’s Mem.”), ECF No. 47, at 3; Defs.’
    Mem. at 1-2. The defendants sum up their invention as follows: “Element (a) specifies that the
    physician provide patient information to the computing device which includes prior therapeutic
    treatment regimen information. This information is then processed against a first knowledge
    base that contains different treatment regimens and a second knowledge base of expert rules.
    The computing device then generates available treatments along with advisory information for
    those treatments. By providing the patient information to the system and allowing interaction
    with the physician, the Patents describe how therapeutic treatment regimens can be listed with
    corresponding advisory information.” Defs.’ Mem. at 11.
    The Court’s analysis focuses on the patentability of Claim 1 of the ‘786 patent. The
    language for Claim 1 in both the ‘786 and ‘988 patent is nearly identical. SmartGene asserts that
    the differences between Claim 1 in the ‘786 patent and ‘988 patent are insignificant, and that
    these first claims are representative of all of the claims of the patents-in-dispute. Pl.’s Mem. at 8
    n.3. The defendants failed to contest this characterization in their brief. 4 The Court concludes
    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
    . Accordingly, the pending Motion turns on whether Claim 1 of the ‘786 patent
    4
    Although not raised in their brief, the defendants erroneously asserted at the Motions Hearing that the “method”
    and “system” claims at issue require a different standard of review for subject matter patentability. Tr. 29:6-30:17.
    Here, Claim 1 in both the ‘786 and ‘988 patents is a method claim, while Claim 23 in both the ‘786 patent and ‘988
    patent is a system claim. See Pl.’s Mem. at 11 nn. 5-6. Specifically, the defendants argued that “for a system claim,
    there is a little bit different analysis because claiming an actual system . . . makes it even less abstract because it’s
    not just a method . . . [I]t is even more intimately connected to the computer, as it is the system.” Tr. 30:4-15. The
    defendants fail to cite any authority that supports their assertion, and ignore authority to the contrary. See, e.g., In re
    Meyer, 
    688 F.2d 789
    , 795 n.3 (C.C.P.A. 1982) (“for purposes of section 101, [claims reciting “means for”
    performing the steps set forth in the method claims] are not treated differently from method claims”).
    3
    constitutes eligible subject matter under 
    35 U.S.C. § 101
     of the Patent Act. Claim 1 of the ‘786
    patent is directed to:
    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; and
    (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.
    ‘786 patent, Col. 17-18, ECF No. 4-1.
    B.      Procedural History
    The litigation between these parties originated in September 2007, when ABL SA filed a
    lawsuit in the United States District Court for the Eastern District of Texas, Marshall Division,
    against SmartGene, alleging that SmartGene “manufactures, uses and sells products that infringe
    the ‘786 and ‘988 Patents.” Compl. ¶ 9. ABL SA alleged specifically that “Smartgene’s
    IDNS™ HIV program incorporates at least one technology which infringes at least claim 1 of
    each [of] the ‘786 and ‘988 Patents.” 
    Id.
     The district court in Texas dismissed the case on April
    10, 2008 for lack of personal jurisdiction. 
    Id. at 10
    .
    4
    SmartGene commenced this action in the District Court for the District of Columbia
    against ABL SA on April 11, 2008, seeking declaratory judgment of non-infringement, patent
    invalidity, and patent unenforceability under the Patent Act, 
    35 U.S.C. § 1
     et seq., and the
    Declaratory Judgment Act, 
    28 U.S.C. §§ 2201-2202
    . 5 SmartGene asserts in its Complaint that
    the ‘786 patent and the ‘988 patent are invalid “for failing to comply with 
    35 U.S.C. §§ 101-103
    and/or 112.” Compl. ¶¶ 20, 26. 6
    ABL SA filed its Answer and Counterclaims on October 6, 2008, alleging that
    SmartGene’s products “[incorporate] at least one technology which infringes at least claim 1 of
    each of the ‘786 and the ‘988 patents.” Answer, ECF No. 12, at ¶ 42. 7
    On February 3, 2009, SmartGene’s unopposed motion to stay this proceeding, see ECF
    No. 18, was granted due to concurrent patent validity reexaminations brought before the PTO.
    See Order, ECF No. 19. Cumulatively, the defendants advise that the PTO held six
    reexaminations—three for each of the patents-in-dispute—with two reexaminations combined
    for each patent. Tr. 45:11-13. None of the reexamination proceedings, however, addressed the
    subject matter eligibility question under 
    35 U.S.C. § 101
    . Tr. 45:16. The PTO completed its
    reexamination proceedings and issued a final non-appealable denial of further review
    5
    This Court has jurisdiction to adjudicate this dispute pursuant to 
    28 U.S.C. § 1331
     and 
    28 U.S.C. § 1338
    .
    6
    SmartGene further claims that “[d]uring Defendant’s prosecution of patent applications PCT US9907171 and EP
    999166262.1, which claim priority to the application to which the ‘786 and ‘988 Patents claim priority, the PCT and
    European Patent Office (“EPO”) search and examination authorities cited prior art references in reports dated
    October 22, 1999, September 14, 2004, March 9, 2005, October 27, 2005, and March 17, 2006.” Compl. ¶ 11.
    SmartGene claims that the EPO “determined that the EP 999166262.1 application was “not patentable in view of
    this prior art . . .” Compl. ¶ 12. The prior art utilized to deny the EPO patent was apparently unavailable during the
    PTO proceedings because the PTO Board of Appeals “said it would not consider those references” in its
    reexamination proceeding. Tr. 6:4-8. Accordingly, SmartGene claims that this prior art is “material to the
    patentability of the ‘786 and ‘988 Patent claims, and, upon information and belief, renders the ‘786 and ‘998 Patents
    invalid by 
    35 U.S.C. § 102
     and/or § 103.” Compl. ¶ 13. This claim is not at issue in the pending motion.
    7
    SmartGene asserts that the counterclaim for infringement is invalid because it was asserted by ABL PLT, rather
    than ABL SA. Pl.’s Mem. at 1 n.1. The Court need not address this issue because the patents are invalid and the
    counterclaims are moot.
    5
    proceedings on June 14, 2011. Joint Motion to Lift Stay, ECF. No. 32, at 1. The PTO concluded
    that all of the claims of both patents-in-dispute were patentable over the prior art presented
    during the reexamination. Id.
    On September 7, 2011, the parties filed a joint motion to lift the stay and submitted a
    proposed scheduling order. Id. This case was then reassigned to the undersigned Judge on
    September 15, 2011.
    This Court lifted the stay on October 21, 2011, and subsequently entered a scheduling
    order to govern the proceedings in this matter. See Minute Order (Oct. 21, 2011); Scheduling
    Order, ECF No. 39. SmartGene filed the instant Motion for Partial Summary Judgment on
    December 12, 2011, alleging that the ‘786 patent and the ‘988 patent constituted ineligible patent
    subject matter under 
    35 U.S.C. § 101
     and pursuant to Bilksi v. Kappos, 
    130 S. Ct. 3218
     (2010).
    See ECF No. 47. Both parties agree that the resolution of this motion does not depend on the
    disposition of any facts. Pl.’s Mem. at 2; Tr. 28:10-15. 8
    This Court held a hearing on the Motion for Partial Summary Judgment and a Markman
    Hearing to resolve disputes over claim construction on March 9, 2012 (“Motion Hearing”). For
    the reasons explained below, SmartGene’s Motion for Partial Summary Judgment is granted. 9
    II.        LEGAL STANDARD
    A.      Summary Judgment
    Pursuant to Rule 56 of the Federal Rules of Civil Procedure, summary judgment shall be
    granted “if the movant shows that there is no genuine dispute as to any material fact and the
    8
    While the defendants state in their opposition brief that “there are several issues of material fact that should
    preclude the granting of summary judgment,” see Defs.’ Mem. at 1, they did not file a separate statement of disputed
    material facts, as required by Local Civil Rule 7(h), and clarified at the Motions Hearing that there are no
    outstanding material facts that prevent adjudication of this Motion for Partial Summary Judgment. See Tr. 28:10-15.
    9
    Since the Court grants summary judgment for SmartGene, the Court need not proceed with claim construction.
    6
    movant is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a); Anderson v. Liberty
    Lobby, 
    477 U.S. 242
    , 247 (1986); Estate of Parsons v. Palestinian Authority, 
    651 F.3d 118
    , 123
    (D.C. Cir. 2011); Tao v. Freeh, 
    27 F.3d 635
    , 638 (D.C. Cir. 1994). Summary judgment is
    properly granted against a party who, “after adequate time for discovery and upon motion, . . .
    fails to make a showing sufficient to establish the existence of an element essential to that party’s
    case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett,
    
    477 U.S. 317
    , 322 (1986). The burden is on the moving party to demonstrate that there is an
    “absence of a genuine issue of material fact” in dispute. Celotex Corp., 
    477 U.S. at 323
    .
    In ruling on a motion for summary judgment, the court must draw all justifiable
    inferences in favor of the nonmoving party, and shall accept the nonmoving party’s evidence as
    true. Anderson, 
    477 U.S. at 255
    ; Estate of Parsons, 
    651 F.3d at 123
    ; Tao, 
    27 F.3d at 638
    . The
    court is only required to consider the materials explicitly cited by the parties, but may on its own
    accord consider “other materials in the record.” FED. R. CIV. P. 56(C)(3). For a factual dispute to
    be “genuine,” Estate of Parsons, 
    651 F.3d at 123
    , the nonmoving party must establish more than
    “[t]he mere existence of a scintilla of evidence” in support of its position, Anderson, 
    477 U.S. at 252
    , and cannot simply rely on allegations or conclusory statements. Greene v. Dalton, 
    164 F.3d 671
    , 675 (D.C. Cir. 1999). Rather, the nonmoving party must present specific facts that would
    enable a reasonable jury to find in its favor. 
    Id.
     If the evidence “is merely colorable, . . . or is
    not significantly probative, . . . summary judgment may be granted.” Anderson, 
    477 U.S. at
    249-
    50 (citations omitted).
    B.      Subject Matter Patentability under the Patent Act
    SmartGene’s Motion for Partial Summary Judgment challenges the subject matter
    eligibility of the patents-in-dispute under 
    35 U.S.C. § 101
    . See Pl.’s Mot. for Part. Summ. J.
    7
    (“Pl.’s Mot.”), ECF No. 47. Congress has defined which inventions are patentable in Section
    101 of the Patent Act, which states in its entirety:
    Whoever invents or discovers any new and useful process, machine, manufacture,
    or composition of matter, or any new and useful improvement thereof, may obtain
    a patent therefor, subject to the conditions and requirements of this title.
    
    35 U.S.C. § 101
    .
    The Patent Act defines the term “process” as “process, art or method, and includes a new
    use of a known process, machine, manufacture, composition of matter, or material.” 
    35 U.S.C. § 100
    .
    The Supreme Court has further elaborated on what constitutes a patentable process claim,
    noting that
    a process may be patentable, irrespective of the particular form of the
    instrumentalities used . . . A process is a mode of treatment of certain materials to
    produce a given result. It is an act, or a series of acts, performed upon the subject-
    matter to be transformed and reduced to a different state or thing. If new and
    useful, it is just as patentable as is a piece of machinery.
    Diamond v. Diehr, 
    450 U.S. 175
    , 182-83 (1981) (quoting Cochrane v. Deener, 
    94 U.S. 780
    , 787-88 (1877)).
    While the Patent Act covers a broad range of subject matter, there are three important
    subject matter exceptions from patentability: “laws of nature, physical phenomena, and abstract
    ideas.” Bilski v. Kappos, 
    130 S. Ct. 3218
    , 3225 (2010) (“Bilski II”) (quoting Diamond v.
    Chakrabarty, 
    447 U.S. 303
    , 309 (1980)); Gottschalk v. Benson, 
    409 U.S. 63
    , 67 (1972). The
    Supreme Court has found that these categories of exceptions “are not patentable, as they are the
    basic tools of scientific and technological work.” Benson, 
    409 U.S. at 67
    . “Thus, the Court has
    written that a new mineral discovered in the earth or a new plant found in the wild is not
    patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc²; nor
    could Newton have patented the law of gravity. Such discoveries are manifestations of . . .
    8
    nature, free to all men and reserved exclusively to none.” Mayo Collaborative Servs. v.
    Prometheus Labs.,
    132 S. Ct. 1289
    , 1293 (2012) (“Prometheus”) (citations and quotation marks
    omitted). “While these exceptions are not required by the statutory text,” the Supreme Court has
    noted, “they are consistent with the notion that a patentable process must be ‘new and useful.’
    And, in any case, these exceptions have defined the reach of the statute as a matter of statutory
    stare decisis going back 150 years.” Bilski II, 
    130 S. Ct. at 3225
     (citation omitted). Still, the
    Supreme Court has recognized that “too broad an interpretation of this exclusionary principle
    could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or
    apply laws of nature, natural phenomena, or abstract ideas.” Prometheus, 
    132 S. Ct. at 1293
    .
    The issue before this Court is whether the patents-in-dispute are abstract such that they do not
    constitute patentable subject matter. Pl.’s Mem. at 1.
    C.      Level of Deference to the PTO
    Patents issued by the PTO, and their underlying claims, are presumed valid. See 
    35 U.S.C. § 282
    . “[T]his presumption can only be overcome by clear and convincing evidence to
    the contrary.” Unique Indus. v. 965207 Alta. Ltd., No. 08-1095, 
    2012 U.S. Dist. LEXIS 19621
    ,
    at *2 (D.D.C. Feb. 16, 2012); Eli Lilly & Co. v. Barr Labs, 
    251 F.3d 955
    , 962 (Fed. Cir. 2001);
    Apple Computer v. Articulate Sys., 
    234 F.3d 14
    , 20 (Fed. Cir. 2000).
    The determination of whether a claimed invention is invalid for lack of subject matter
    patentability under 
    35 U.S.C. § 101
     is a “threshold inquiry” and a matter of law. See In re Bilski,
    
    545 F.3d 943
    , 950-51 (Fed. Cir. 2008) (“Bilski I”). “[A]ny claim of an application failing the
    requirements of § 101 must be rejected even if it meets all of the other legal requirements of
    patentability.” Id. at 950. The Court may conduct a section 101 analysis before the Court
    conducts a formal construction of claims. See Ultramercial, LLC v. Hulu, LLC, 
    657 F.3d 1323
    ,
    9
    1325 (Fed. Cir. 2011) (“claim construction may not always be necessary for a § 101 analysis”).
    “Only after an invention has satisfied § 101, will it be analyzed under the remaining hurdles of
    the Patent Act, which include the requirement that an invention be novel, see § 102; nonobvious,
    see § 103; and fully and particularly described, see § 112.” CLS Bank Int’l., 768 F. Supp. 2d at
    221, 233 (citing Bilski II, 
    130 S. Ct. at 3225
    ).
    The fact that the PTO conducted reexaminations of the patents-in-dispute does not trigger
    higher deference on the issue of subject matter patentability because the PTO cannot review
    subject matter eligibility during a reexamination proceeding. 
    37 C.F.R. § 1.552
    . This lawsuit,
    therefore, is not dealing with matters previously covered during the reexamination proceedings.
    
    Id.
     Titled “Scope of reexamination in ex parte reexamination proceedings,” § 1.552 states, in
    relevant part, that upon ex parte reexamination, the PTO may only examine the contested patent
    “on the basis of patents or printed publications and, with respect to subject matter added or
    deleted in the reexamination proceeding, on the basis of the requirements of 
    35 U.S.C. § 112
    .” It
    further states that “[i]ssues other than those indicated . . . will not be resolved in a reexamination
    proceeding. If such issues are raised by the patent owner or third party requester during a
    reexamination proceeding, the existence of such issues will be noted by the examiner in the next
    Office action, in which case the patent owner may consider the advisability of filing a reissue
    application to have such issues considered and resolved.” 
    37 C.F.R. § 1.552
    . “Thus, other
    challenges to the patentability of original claims — such as qualification as patentable subject
    matter under § 101 or satisfaction of the written description and enablement requirements of §
    112—may not be raised in reexamination proceedings.” In re NTP, 
    654 F.3d 1268
    , 1275-76
    (Fed. Cir. 2011); see also 
    35 U.S.C. § 302
     (reexaminations may be conducted on “the basis of
    any prior art”). Since this issue cannot be raised in a reexamination proceeding, no additional
    10
    deference is accorded to the PTO as to subject matter patentability. 10 See, e.g., In re NTP, 
    654 F.3d at 1275-76
    .
    III.     DISCUSSION
    In its Motion for Partial Summary Judgment, SmartGene contends that the patents-in-
    dispute constitute ineligible patent subject matter because they are (1) “directed to abstract ideas
    and mental processes,” and because (2) the patents-in-dispute fail the “machine or
    transformation” (“MOT”) test articulated in Bilski, and are thus invalid. Pl.’s Mem. at 1. In
    support of this contention, SmartGene asserts that the patents-in-dispute are “directed to nothing
    more than a mental process in which a person, e.g., a physician, engages when determining a
    treatment for a patient suffering from a disease or a medical condition.” Pl.’s Mem. at 6. 11
    The defendants respond that (1) the claims at issue are not directed to an abstract idea,
    and (2) although the MOT test is “not the sole test for patentability,” the patents-at-issue satisfy
    that test. Def.’s Mem. at 7-8. According to the defendants, the patents-in-dispute “describe an
    interactive system, method, and computer program to assist the physician in keeping track of
    potential treatment regimens and optionally ranking those regimens based on the patient’s
    personal information.” Defs.’ Mem. at 1-2. “Rather than supplanting the role of the physician,
    as SmartGene suggests, the invention seeks to improve patient treatment by giving the physician
    reference to a program which can exceed his or her own capabilities.” Id. at 2.
    10
    Procedurally, the parties could have raised with the Court the issue of subject matter patentability before
    requesting a stay of this patent action pending PTO reexamination proceedings. If that issue had been taken up
    earlier in this case, the PTO may have been spared six reexaminations of the patents-in-dispute.
    11
    As noted, Claim 1 of the ‘786 patent discloses a “method for guiding the selection of a therapeutic treatment
    regimen for a patient with a known disease or medical condition” by: (a) having the user input information into a
    “computing device” comprised of three databases, including (i) a medical conditions database, (ii) a database
    containing expert rules for selecting a treatment regimen, and (iii) an advisory information database; (b) having the
    computing device generate a ranked listing of therapeutic treatment regimens for the patient; and (c) generating
    advisory information based on patient information and expert rules. See ‘786 Patent, Col. 17-18, ECF No. 4-1.
    11
    Guided by Supreme Court and Federal Circuit precedent in this area, the Court proceeds
    with its analysis by (A) examining 
    35 U.S.C. § 101
     as a “threshold” inquiry into patent validity;
    (B) reviewing Supreme Court caselaw “guideposts” on the subject of patent subject matter
    eligibility; and then examining whether the patents-in-dispute (C) satisfy the MOT test, and (D)
    constitute eligible subject matter irrespective of the MOT test. Finally, although the Court does
    not formally construct the claims on which there is disagreement between the parties, the Court
    (E) examines the claim construction proposals to inform its section 101 analysis. The Court
    concludes that the relevant precedent and tests demonstrate that the patents-in-dispute constitute
    ineligible subject matter and are thus invalid.
    A.      
    35 U.S.C. § 101
     as a Threshold Inquiry Into Patent Validity
    As the Supreme Court noted in Bilski v. Kappos, the 
    35 U.S.C. § 101
     inquiry is a
    “threshold test.” Bilski II, 
    130 S. Ct. 3218
    , 3225 (2010). “It is well-established that [t]he first
    door which must be opened on the difficult path to patentability is § 101.” CLS Bank Int’l. v.
    Alice Corp. Pty. Ltd., 
    768 F. Supp. 2d 221
    , 233 (D.D.C. 2011) (citation and quotation marks
    omitted). A recent Federal Circuit decision, however, cast doubt on this approach, sharply
    questioning the wisdom of utilizing the § 101 subject matter inquiry as a threshold question. See
    MySpace, Inc. v. Graphon Corp., No. 2011-1149, 
    2012 U.S. App. LEXIS 4375
     (Fed. Cir. Mar. 2,
    2012). In a majority decision, the Federal Circuit cautioned that lower courts should avoid the
    “swamp of verbiage that is § 101 by exercising their inherent power to control the processes of
    litigation, . . . and insist that litigants initially address patent invalidity issues in terms of the
    conditions of patentability defenses as the statute provides, specifically §§ 102, 103, and 112.”
    Id. at *24 (internal citation omitted). The decision asserts that this approach would alleviate the
    necessity of entering “the murky morass that is § 101 jurisprudence.” Id; see also Classen
    12
    Immunotherapies, Inc. v. Biogen Idec, 
    659 F.3d 1057
    , 1073-75 (Fed. Cir. 2011) (urging judicial
    restraint in the face of a plethora of section 101 litigation).
    Following the Motions Hearing in this case, however, the Supreme Court, in Mayo
    Collaborative Servs. v. Prometheus Labs., 
    132 S. Ct. 1289
     (2012), clarified that a 
    35 U.S.C. § 101
     subject matter patentability inquiry is the threshold analysis for determining patent validity.
    The Supreme Court explicitly rejected that the “screening function” of 
    35 U.S.C. § 101
     may be
    performed by determining the novelty, see 
    35 U.S.C. § 102
    , non-obviousness, see 
    35 U.S.C. § 103
    , or the adequacy of the written specification, see 
    35 U.S.C. § 112
    , of a patentable claim. 
    Id. at 1303-04
    . The Court cautioned that “[shifting] the patent-eligibility inquiry entirely to these
    later sections risks creating significantly greater legal uncertainty, while assuming that those
    sections can do work that they are not equipped to do.” 
    Id. at 1304
    . Conducting a patent
    eligibility inquiry under any of the alternative sections “would make the ‘law of nature’
    exception to §101 patentability a dead letter. The approach is therefore not consistent with prior
    law.” Id. at 1303; see also Bilski II, 
    130 S. Ct. at 3235
    ; CLS Bank Int’l., 
    768 F. Supp. 2d at 233
    ;
    see also H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (“A person may have ‘invented’ a
    machine or a manufacture, which may include anything under the sun that is made by man, but it
    is not necessarily patentable under section 101 unless the conditions of the title are fulfilled”)
    (quoted in Prometheus, 
    132 S. Ct. at 1303-04
    ). Accordingly, this Court treats the § 101 subject
    matter patentability inquiry as the threshold inquiry for patent validity. In this case, the section
    101 analysis begins and ends the Court’s inquiry as it reveals that the patents-in-dispute are not
    patentable.
    13
    B.      “Guideposts” for Adjudicating Subject Matter Patentability
    The Supreme Court has highlighted a trilogy of its decisions – namely Gottschalk v.
    Benson, Parker v. Flook, and Diamond v. Diehr – as useful “guideposts” when considering
    exceptions to patent subject matter eligibility under 
    35 U.S.C. § 101
    . Bilski II, 
    130 S. Ct. at 3231
    . The Court notes that “[i]n searching for a limiting principle, [the Supreme Court’s]
    precedents on the unpatentability of abstract ideas provide useful tools.” 
    Id. at 3229
    . The most
    recent Supreme Court decision on this topic, Prometheus, reaffirms the importance of these
    tools, focusing its section 101 analysis, inter alia, on this trilogy of cases as well as Bilski II. See
    Prometheus, 
    132 S. Ct. at 1298-1301
    . This Court follows suit. The Court reviews these
    guideposts below, and finds that, under this instructive precedent, the patents-in-dispute are not
    patent-eligible processes.
    1.      Gottschalk v. Benson
    The Supreme Court’s decision in Benson is the first of these patent subject matter
    eligibility cases. Gottschalk v. Benson, 
    409 U.S. 63
     (1972). There, the Supreme Court held that
    “a method for converting binary-coded decimal (BCD) numerals into pure binary numerals” that
    was “not limited to any particular art or technology, to any particular apparatus or machinery, or
    to any particular end use” was not a process covered by the Patent Act. 
    Id. at 64, 71-73
    . The
    claimed method sought patent protection over an “algorithm” that represented “a generalized
    formulation for programs to solve mathematical problems of converting one form of numerical
    representation to another.” 
    Id. at 65
    . The Supreme Court observed that “[t]he mathematical
    formula involved here has no substantial practical application except in connection with a digital
    computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt
    the mathematical formula and in practical effect would be a patent on the algorithm itself.” 
    Id.
     at
    14
    71-72. The Court expressed concern that “the ‘process’ claim is so abstract and sweeping as to
    cover both known and unknown uses,” which could “vary from the operation of a train to
    verification of drivers’ licenses to researching the law books for precedents” and “be performed
    through any existing machinery or future-devised machinery or without any apparatus.” 
    Id. at 68
    . Accordingly, the Supreme Court denied the claim and found that computer algorithms that
    encompass methods for mathematical conversion are “procedure[s] for solving a given type of
    mathematical problem” and are ineligible patent subject matter that erroneously seeks to patent
    the “basic tools of scientific and technological work.” 
    Id. at 67
    .
    2.      Parker v. Flook
    “In Flook, the Court considered the next logical step after Benson.” Bilski II, 
    130 S. Ct. at 3230
    . There, the patent-holder asserted patent rights protection over a “method for updating
    alarm limits,” which indicated the point at which the catalytic conversion conditions in the
    petrochemical and oil-refining industries can produce inefficiencies or danger. Parker v. Flook,
    
    437 U.S. 584
    , 585. As the Court noted, “[t]he only novel feature of the method is a
    mathematical formula.” 
    Id.
     “In [Benson], we held that the discovery of a novel and useful
    mathematical formula may not be patented. The question in this case is whether the
    identification of a limited category of useful, though conventional, post-solution applications of
    such a formula makes respondent’s method eligible for patent protection.” 
    Id.
     The Court found
    that the “only difference between the conventional methods of changing alarm limits and that
    described in respondent’s application rests in the second step – the mathematical algorithm or
    formula” and that “a claim for an improved method of calculation, even when tied to a specific
    end use, is unpatentable subject matter under § 101.” Id. at 595 & n.18.
    15
    Moreover, the Court found that incorporation of “post-solution” activity did not render
    the formula patentable, because a “competent draftsman could attach some form of post-solution
    activity to almost any mathematical formula.” Id. at 590. The Court rejected the idea that post-
    solution activity, “no matter how conventional or obvious in itself, can transform an unpatentable
    principle into a patentable process,” finding that would “[exalt] form over substance.” Id. The
    Pythagorean theorem, for example, would not have been patentable even if a final step had been
    added “indicating that the formula, when solved, could be usefully applied to existing surveying
    techniques.” Id. The patent thus constituted ineligible subject matter because the claim sought
    patent protection over an improved method for computing alarm limits, which were otherwise
    computable by hand. Id. As the Court explained in Diehr and Bilski II, “Flook stands for the
    proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by
    attempting to limit the use of the formula to a particular technological environment’ or adding
    ‘insignificant postsolution activity.’” Bilski II, 
    130 S. Ct. at 3230
     (quoting Diehr, 
    450 U.S. at 191-92
    ).
    3.      Diamond v. Diehr
    In Diehr, the Supreme Court “established a limitation on the principles articulated in
    Benson and Flook.” Bilski II, 
    130 S. Ct. at 3230
    . The Court upheld as patentable subject matter
    a process for molding, or “curing,” raw synthetic rubber into a product that would retain its
    shape. This process involved using the well-known components of time, temperature and a
    mathematical formula, but combined them with a previously uncontrollable variable (i.e., the
    temperature inside of a rubber press) and use of a programmed computer. Diamond v. Diehr,
    
    450 U.S. 175
    , 187 (1981). When implemented in a series of steps, the claimed process took the
    “guess work” out of the proper curing time. Although the invention incorporated a well-known
    16
    mathematical formula, the Supreme Court concluded that the patent constituted eligible subject
    matter because it sought process protection over the formula’s use solely in conjunction with the
    other steps of the process. 
    Id.
     “These other steps apparently added to the formula something
    that in terms of patent law’s objectives had significance – they transformed the process into an
    inventive application of the formula.” Prometheus, 
    132 S. Ct. at 1299
    .
    Unlike in Benson, where the “sole practical application of the algorithm was in
    connection with the programming of a general purpose digital computer,” Diehr, 
    450 U.S. at 185-86
    , the claimed invention in Diehr used a mathematical equation tied to “all of the other
    steps in their claimed process,” which itself was limited to curing synthetic matter. 
    Id. at 187
    .
    The Supreme Court acknowledged that although, “[o]bviously, one does not need a ‘computer’
    to cure natural or synthetic rubber,” when the computer significantly reduces the probability of
    damaging the rubber, the process is not rendered unpatentable solely because of the use of a
    mathematical formula or computer. 
    Id.
    The Supreme Court articulated the following guidance: “A mathematical formula as such
    is not accorded the protection of our patent laws [citing Benson], and this principle cannot be
    circumvented by attempting to limit the use of the formula to a particular technological
    environment [citing Parker]. Similarly, insignificant post-solution activity will not transform an
    unpatentable principle into a patentable process. Ibid.” Diehr, 
    450 U.S. at 191-92
    . The Court
    went on to say, however, that, “when a claim containing a mathematical formula implements or
    applies that formula in a structure or process which, when considered as a whole, is performing a
    function which the patent laws were designed to protect (e.g., transforming or reducing an article
    to a different state or thing), then the claim satisfies the requirements of § 101.” Id. at 192.
    17
    4.      Bilski II
    In Bilski II, the Supreme Court held that the trilogy of cases discussed above – Benson,
    Flook, and Diehr – made “clear that petitoner’s application [for a business method for hedging
    risk in the energy commodities market] is not a patentable process.” 
    130 S. Ct. at 3231
    (quotation marks omitted). The Court stated that the patent application sought protection over a
    “fundamental economic practice long prevalent in our system of commerce and taught in any
    introductory finance class.” 
    Id. at 3231
     (citation omitted). The Court found that “[t]he concept
    of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an
    unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing
    petitioners to patent risk hedging would preempt use of this approach in all fields, and would
    effectively grant a monopoly over an abstract idea.” 
    Id.
     The Court drew this conclusion
    “narrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that
    petitioners’ claims are not patentable processes because they are attempts to patent abstract
    ideas.” 
    Id. at 3229-30
    .
    5.      Prometheus
    The most recent guidance from the Supreme Court on section 101 analysis concerns
    patent claims covering a process aimed to aid doctors administering thiopurine drugs to treat
    patients with autoimmune disease. “The claims purport to apply natural laws describing the
    relationships between the concentration in the blood of certain thiopurine metabolites and the
    likelihood that the drug dosage will be ineffective or induce harmful side-effects.” Mayo
    Collaborative Servs. v. Prometheus Labs., Inc., 
    132 S. Ct. 1289
    , 1294 (2012). In Prometheus,
    the Court concluded, based on the Court’s precedent detailed above, that the process claims were
    directed to natural law and were thus unpatentable.
    18
    Specifically, the Prometheus Court distilled the guideposts from its earlier section 101
    cases into the following “warnings.” The Supreme Court warned “against interpreting patent
    statutes in ways that make patent eligibility ‘depend simply on the draftsman’s art’ without
    reference to the ‘principles underlying the prohibition against patents for [natural laws],’” 
    id.
    (quoting Flook, 
    437 U.S. at 593
    ), and warned against “upholding patents that claim processes
    that too broadly preempt the use of a natural law.” 
    Id.
     (citing O’Reilly v. Morse, 
    56 U.S. 62
    ,
    112-120). A “process that focuses upon the use of a natural law” must “contain other elements
    or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to
    ensure that the patent in practice amounts to significantly more than a patent upon the natural law
    itself.” 
    Id.
     (quoting Flook, 
    437 U.S. at 594
    ). The Court found that the patent at issue failed this
    test, explaining that “the steps in the claimed processes (apart from the natural laws themselves)
    involve well-understood, routine, conventional activity previously engaged in by researchers in
    the field.” 
    Id.
     The Court further observed that “upholding the patents would risk
    disproportionately tying up the use of the underlying natural laws, inhibiting their use in the
    making of further discoveries,” and thereby allowing monopolies of unforeseeable scope. Id.
    6.      Patents-in-Dispute Are Unpatentable Abstract Ideas Under Supreme Court
    Precedent
    This Court finds that, as in Benson, Flook, Bilski II, and Prometheus, the “patent
    application here can be rejected under [the Supreme Court’s] precedents . . .” Bilski II, 
    130 S. Ct. at 3231
    . Mental processes and abstract intellectual concepts are simply not patentable for the
    sound reason that “monopolization of those tools through the grant of a patent might tend to
    impede innovation more than it would tend to promote it.” Prometheus, 
    132 S. Ct. at 1293
    . The
    patents-in-dispute do no more than describe just such an abstract mental process engaged in
    19
    routinely, either entirely within a physician’s mind, or potentially aided by other resources in the
    treatment of patients.
    Specifically, the claim here, like the claim in Prometheus, “presents a case for
    patentability that is weaker than the (patent-eligible) claim in Diehr and no stronger than the
    (unpatentable) claim in Flook.” 
    Id. at 1299
    . In Diehr, as noted, the parties sought patent
    protection over the use of a mathematical equation “in conjunction with all of the other steps in
    their claimed process. These include[d] installing rubber in a press, closing the mold, constantly
    determining the temperature of the mold, constantly recalculating the appropriate cure time
    through the use of the formula and a digital computer, and automatically opening the press at the
    proper time.” Diehr, 
    450 U.S. at 187
    . The Court found that the invention was patentable under
    section 101 because it was not “an attempt to patent a mathematical formula, but rather [was] an
    industrial process for the molding of rubber products.” 
    Id. at 192
    . Unlike the patent-eligible
    claim in Diehr, the claim at issue here, as described below, involves no “transformation of an
    article” nor a “step-by-step method for accomplishing such [transformation].” 12 
    Id. at 184
    . The
    claim here is more like the claim in Flook (and Prometheus) because it is merely a recitation of
    abstract steps, rather than an innovation that adds something “specific to the laws of nature [or
    abstract ideas] other than what is well-understood, routine, conventional activity, previously
    engaged in by those in the field.” Prometheus, 
    132 S. Ct. at 1299
    .
    The claims at issue here are also analogous to the claim in In re Meyer, 
    688 F.2d 789
    (C.C.P.A. 1982), a case before the United States Court of Customs and Patent Appeals. There,
    the patent applicant sought patent protection over a process for gathering neurological testing
    data, imputing it into a computer, and using a formula to infer whether certain neurological
    12
    The Court discusses this concept of transformation more fully below in the discussion of the “machine or
    transformation” test.
    20
    elements are functioning. In re Meyer, 688 F.2d at 793. The United States Court of Customs
    and Patent Appeals rejected the patent owner’s assertion that the invention was “concerned with
    replacing, in part, the thinking processes of a neurologist with a computer,” and instead
    concluded that, “the process recited is an attempt to patent a mathematical algorithm rather than
    a process for producing a product as in [Diehr].” Id. at 794. Here, the defendants have stated
    that “the purpose of [their] invention was to provide the practitioner with help, to give the
    practitioner more than he could have just in his mind.” See Tr. 35:16-18. This Court rejects this
    argument where the patents-in-dispute are even more abstract than in Meyer, which at least
    involved a mathematical algorithm. 13
    Before proceeding to the machine-or-transformation test that the Supreme Court has
    highlighted as an “important tool” in section 101 analysis, the Court first examines the ‘786
    patent step-by-step in the context of the Court’s precedent, as the Court did in Prometheus. Set
    against this binding precedent, the Court concludes that nothing in Claim 1 of the ‘786 patent
    transforms the everyday abstract ideas on which it is based into patentable processes.
    a.       An Examination of Each Step in Claim 1 of the ‘786 Patent
    “[W]hen a court examines whether a claim is directed to an abstract idea, the court must
    view each claim as a whole.” CLS Bank Int'l v. Alice Corp. Pty, Ltd., 
    768 F. Supp. 2d 221
    , 232
    (D.D.C. 2011). The Court views Claim 1 as a whole but still finds it useful to examine the claim
    in steps for the purposes of its analysis of the claim as a whole. The first step of Claim 1 of the
    ‘786 patent describes “[a] method for guiding the selection of a therapeutic treatment regimen for
    a patient with a known disease or medical condition, said method comprising.” As SmartGene
    highlights, the language of the claim is directed to “nothing more than a mental process . . .”
    13
    The defendants were given the opportunity to distinguish In Re Meyer at the Motions Hearing and were unable to
    do so, with counsel for the defendants simply reiterating counsel’s view of the purpose and function of the invention
    at issue here, rather than specifically addressing how this case is distinguishable from Meyer. Tr. 34:22-35:25.
    21
    Pl.’s Mem. at 6. In fact, this process is one that is performed in doctors’ offices everyday. A
    doctor speaks with a patient, who describes his or her ailments. The doctor recalls or looks up
    possible treatment regimens, and then advises the patient about the treatment regimen options,
    and the doctor’s recommendation for the patient. Indeed, the patent specification itself admits
    that the invention “can simulate the judgment and behavior of a human or organization that has
    expert knowledge and experience in a particular field.” ‘786 patent, Col. 7, lines 47-49.
    The second step of Claim 1 of the ‘786 patent addresses “(a) providing patient
    information to a computing device comprising [three knowledge databases].” The Court sees
    nothing in this step that is any different than the process a doctor goes through in real time when
    a doctor evaluates a patient by taking a medical history and obtaining information pertinent to
    the patient’s condition and documenting the same in a medical chart. Similarly, the patents’
    reference to three databases also mimics the evaluative process involved in the treatment of
    patients. Specifically, after collecting patient information, a doctor would consider “therapeutic
    treatment regimens for said disease or medical condition” (as in the first knowledge base),
    consult “expert rules for evaluating and selecting a therapeutic treatment regimen for said disease
    or medical condition” (as in the second knowledge base), and review “advisory information
    useful for the treatment of a patient with different constituents of said different therapeutic
    treatment regimens” (as in the third database). The claim itself does not add anything to the
    process that doctors regularly engage in mentally when evaluating and treating patients.
    The next step of Claim 1 of the ‘786 patent is “(b) generating in said computing device a
    ranked listing of available therapeutic treatment regimens for said patient.” The Court views this
    step as describing what goes on in the mind of a doctor in evaluating and ranking possible
    treatment options for a patient based upon the benefits and counter-indicators of each option.
    22
    The final step of Claim 1 of the ‘786 patent is “(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.” The Court understands this step as
    corresponding to a doctor generating a treatment plan for a patient.
    b.       An Examination of Claim 1 of the ‘786 Patent As A Whole
    In essence, these four steps describe abstract ideas that are commonly performed by
    medical professionals in evaluating, considering and constructing treatment options for a patient
    presenting a specific medical condition. As with the claim examined in Prometheus, these “steps
    consist of well understood, routine, conventional activity already engaged in by the scientific
    community; and those steps, when viewed as a whole, add nothing significant beyond the sum of
    their parts taken separately. For these reasons [this Court believes] that the steps are not
    sufficient to transform unpatentable [abstract ideas] into patentable applications . . . .”
    Prometheus, 
    132 S. Ct. at 1298
    . In short, the claims track the abstract mental processes of a
    doctor treating a patient. Accordingly, analyzing Claim 1 of the ‘786 patent under the Supreme
    Court’s precedent, this Court finds that the claims of the patents-in-dispute are abstract ideas and
    unpatentable.
    C.       Claims are Invalid under the Machine-or-Transformation Test
    The Court also finds that the patents-in-dispute are invalid under the “machine-or-
    transformation” or “MOT” test utilized in some of the Supreme Court and Federal Circuit
    precedent. Different tests have been employed over time to analyze claims under section 101.
    See, e.g., State St. Bank & Trust Co. v. Signature Fin. Group, 
    149 F.3d 1368
    , 1373 (Fed. Cir.
    1998) (finding that a transformation “constitutes a practical application of a mathematical
    algorithm, formula, or calculation, because it produces ‘a useful, concrete and tangible result’”).
    23
    The most recent test developed in Bilski I is the MOT test. The Federal Circuit, sitting en banc
    in Bilski I, articulated the standards for determining whether a claimed method constituted a
    patentable “process” under section 101. There, the Federal Circuit clarified that the “machine-
    or-transformation” test was the “governing test” for determining patent eligibility under section
    101. In re Bilski, 
    545 F.3d 943
    , 955-56 (Fed. Cir. 2008).
    In Bilski II, the Supreme Court notably rejected the Federal Circuit’s decision that the
    “machine or transformation” test was the “sole test for governing § 101 analysis.” 
    130 S. Ct. at 3227
    . The Court found that while “[i]t is true that patents for inventions that did not satisfy the
    machine-or-transformation test were rarely granted in earlier eras . . . times change.” 
    Id.
     The
    Court reflected generally that “[w]ith ever more people trying to innovate and thus seeking
    patent protections for their inventions, the patent law faces a great challenge in striking the
    balance between protecting inventors and not granting monopolies over procedures that others
    would discover by independent, creative application of general principles.” 
    Id. at 3228
    . The
    Court, however, did not foreclose the use of the machine-or-transformation test. 
    Id. at 3227
    .
    Indeed, while the Supreme Court emphasized that the MOT test is “not the sole test for deciding
    whether an invention is a patent-eligible ‘process,’” the Court noted that the Supreme Court’s
    “precedents establish that the [MOT] test is a useful and important clue, an investigative tool, for
    determining whether some claimed inventions are processes under § 101.” Id. Most recently, in
    Prometheus, the Supreme Court rejected not the MOT test but the Federal Circuit’s application
    of that test. There, the Federal Circuit concluded that the transformation prong of the MOT test
    was satisfied because the claimed process involved “transforming the human body by
    administering a thiopurine drug and transforming the blood by analyzing it to determine the
    metabolite levels.” Prometheus, 
    132 S. Ct. at 1302
    . The Court described as “irrelevant” the
    24
    transformation on which the Federal Circuit upheld the patent at issue since no part of the so-
    called “transformation” required the claimed process. 
    Id.
     Accordingly, this Court employs the
    MOT test as a useful investigative tool.
    Under the MOT test, a process claim is patentable if “(1) it is tied to a particular machine
    or apparatus, or (2) it transforms a particular article into a different state or thing.” Bilski I, 
    545 F.3d at 954
    ; see also Flook, 
    437 U.S. at
    589 n. 9 (“An argument can be made [that the Supreme
    Court] has only recognized a process as within the statutory definition when it either was tied to
    a particular apparatus or operated to change materials to a different state or thing.”) (internal
    quotation marks and citations omitted). The “use of a specific machine or transformation of an
    article must impose meaningful limits on the claim’s scope to impart patent-eligibility” and,
    furthermore, “the involvement of the machine or transformation in the claimed process must not
    merely be insignificant extra-solution activity.” CLS Bank Int’l, 
    768 F. Supp. 2d at 234
    (citations and quotation marks omitted). SmartGene claims that the patents-in-dispute “[a]ll fail”
    the MOT test because (1) “they are not tied to a particular machine or apparatus that imparts
    meaningful limitations on the claims” and (2) “they do not transform a particular article into a
    different state or thing.” Pl.’s Mem. at 11. The defendants argue, in response, that “[e]ven
    though the [MOT] test is no longer preferred for inventions of the Information Age,” see
    Ultramercial, 
    657 F.3d at 1327
    , “the invention of the Asserted Claims satisfies both prongs of
    the test.” Defs.’ Mem. at 10. The Court first addresses the machine prong and then the
    transformation prong, and finds that the patents-in-dispute do not satisfy either one of them. The
    Court also finds that the computing device referenced by the claims does not impose any
    meaningful limit on the scope of the claims.
    25
    1.       Claims of the Patents-in-Dispute Are Not Tied to a Particular Machine
    To satisfy this prong, a claimed process must be “tied to a particular machine or
    apparatus.” Bilski I, 
    545 F.3d at 954
    . SmartGene argues that “[t]he claims of the patents-in-suit
    are essentially methods for providing and generating information, and do not identify a particular
    machine for performing the recited claim steps. While the claims reference a ‘computing
    device,’ this generic token reference does not identify any particular machine or provide any
    indication of what particular type of machine is to be used . . .” Pl.’s Mem. at 12. The
    defendants argue in response that the claims meet the machine prong of the MOT test “because
    the claims are tied to a particular machine that has [three databases]” and “[i]t can hardly be
    argued that the computing device is incidental to the invention, rather the computing device
    allows the invention to pull information from three databases.” Defs.’ Mem. at 12-13. The
    Court finds that the patents-in-dispute do not satisfy the machine prong for two reasons.
    First, the claims of the patents-in-dispute do not refer to any “particular” machine. While
    the claims reference a “computing device,” these references are insufficient to satisfy the
    machine test. The defendants argue that “the figures and specification specify how the computer
    is to be specially programmed to implement the method covered by the Asserted Claims,” but the
    Court is not persuaded. Defs.’ Mem. at 13. 14 The patents-in-dispute include no special
    programming code, nor provide any specific algorithms that the computers would use to perform
    the database matching or synthesis of expert rules, advisory information, treatment regimens, and
    14
    Counsel for the defendants made an argument at the Motions Hearing that “figure one, a flow-chart” may be
    “considered [an algorithm].” Tr. 36:23-37:3. The chart simply shows boxes labeled with descriptions of the data
    and the verbs “generate,” “provide,” “examine,” “enter,” and “modify.” The Court is not at all convinced that the
    flow chart in figure one is an “algorithm,” and counsel has provided no authority for this figurative leap. Counsel
    further argues that “under the system description there is a lengthy discussion of the system architecture, the
    essential server, the local server and exactly what steps are carried out to perform the method [in columns 7, 8, 9,
    10]. So although [there] wasn’t any code that was included in the patent, there doesn’t have to be code for there to
    be an algorithm disclosed in the specification.” Tr. 39:8-14. SmartGene argues in response that columns 7 through
    10 do not contain an algorithm. Tr. 43:19-22. The Court agrees.
    26
    patient information. Moreover, unlike in Ex Parte Brown, Appeal 2009-012201, 2011 Pat. App.
    LEXIS 15902 (BPAI Feb. 8, 2011), on which the defendants rely, see Defs.’ Mem. at 9-10, there
    is no specific “server” specified in the claims.
    To the extent that the claims reference a machine at all, they reference a “general purpose
    computer,” which does not satisfy the machine prong. See, e.g., CLS Bank Int’l., 
    768 F. Supp. 2d at 237
     (“With evolving guidance on this issue, district courts have determined that a method
    claim that is directed to a general purpose computer is not tied to a particular machine under the
    MOT test.”) (citations omitted); Graff/Ross Holdings LLP v. Fed. Home Loan Mortg. Corp., No.
    07-796, 
    2010 U.S. Dist. LEXIS 141399
    , at *20 (D.D.C. 2010) (finding that a “computer
    processor” referenced in method claim is not a “particular machine” under the MOT test);
    Accenture Global Services, GMBH v. Guidewire Software, Inc., 
    691 F. Supp. 2d 577
    , 597
    (D.Del. 2010) (“data processing system”, “claim folder”, “display device”, and “screen”
    referenced in claim did not constitute a “particular machine” for the purposes of the MOT test);
    see also ECF No. 55, Ex. A, July 8, 2009 Office Action for Patent Application No. 10/857, 105
    (“105 Application”) (application where the PTO found that the term “computing device” did not
    refer to a particular machine and rejected claims on that basis). 15
    The defendants argue that the Court should look to VS Techs, LLC v. Twitter, Inc., No.
    2:11-cv-43, 
    2011 U.S. Dist. LEXIS 114998
     (E.D. Va. Oct. 4, 2011), as “[a] good example of the
    15
    SmartGene notes that the difference between the ‘105 Application and the patents-in-dispute “is that the PTO
    applied the MOT test to the claims of the ‘105 Application and not to the patents-in-suit as the MOT was not the law
    at the time the patents-in-suit issued.” Pl.’s Reply at 7. PTO states as a reason for the rejection of claims in the ‘105
    Application: “Claims 1-15 remain rejected under 
    35 U.S.C. § 101
     because the claimed invention is directed to non-
    statutory matter. This is a new grounds of rejection necessitated by the recent decision in [In re Bilski, 
    545 F.3d 943
    (Fed. Cir. 2008)]. . . In the instant case, the method claims are not so tied to another statutory class of invention
    because the method steps that are critical to the invention are ‘not tied to any particular apparatus or machine’
    and therefore do not meet the machine-or-transformation test . . . The instantly recited ‘computing device’ is not a
    specific computing device and the claims are therefore non-statutory. The rejection could be overcome by reciting a
    ‘suitably programmed computing device’ or ‘appropriately programmed computing device’ provided such is
    supported in the specification as originally filed.” ECF No. 55, Ex. A at 2-3 (emphasis in original). PTO may have
    come to the same conclusion if it had examined the patents-in-dispute under the same criteria.
    27
    proper application of the machine prong . . .” Defs.’ Mem. at 12. There, the court found that a
    claim satisfied the machine prong because “the patent constitutes a practical application of an
    idea.” VS Techs, LLC, 
    2011 U.S. Dist. LEXIS 114998
    , at *14-15. The Court finds, to the
    contrary, that the caselaw is clear that allowing a process to become patentable simply because it
    is computer aided and constitutes a practical application would render the subject-matter
    eligibility criteria contained in section 101 meaningless. See Dealertrack, Inc. v. Huber, Nos.,
    
    2012 WL 164439
    , at *16 (concluding that claims drawn to a “computer-aided” method of
    processing information through a clearinghouse were ineligible abstract ideas under section 101);
    CyberSource Corp. v. Retail Decisions, Inc., 
    654 F.3d 1366
    , 1375 (Fed. Cir. 2011) (emphasizing
    “that the basic character of a process claim drawn to an abstract idea is not changed by claiming
    only its performance by computers, or by claiming the process embodied in program instructions
    on a computer readable medium”).
    Furthermore, the fact that the ‘786 claim relies in part on four other patents for its
    inference database does not save the defendants’ claim under section 101. The defendants
    argued at the Motions Hearing that “the means plus function language is relevant [to the machine
    prong analysis], because it provides even further support that the claims are intimately tied to the
    computer for as you know, for means plus function language, we have to disclose the structure.”
    Tr. 39:16-20. In turning to the defendants’ proposed claim construction of the term “means for
    generating,” which they cited at the Motions Hearing to satisfy the machine prong of the MOT
    test, the Court notes that the defendants propose the following construction: “Inference engine
    and its equivalents.” Defs.’ Cl. Constr. Br., ECF No. 54, at 6. The defendants describe the
    “corresponding structure” as follows:
    The inference engine 26 may be implemented as hardware, software, or
    combinations thereof. Inference engines are known and any of a variety thereof
    28
    may be used to carry out the present invention. Examples include, but are not
    limited to, those described in U.S. Pat. No. 5,263,127 to Barabash et al. (Method
    for fast rule execution of expert systems); U.S. Pat. No. 5,720,009 to Kirk et al.
    (Method of rule execution in an expert system using equivalence classes to group
    database objects); U.S. Pat. No. 5,642,471 to Paillet (Production rule filter
    mechanism and inference engine for expert systems); U.S. Pat. No. 5,664,062 to
    Kim (High performance max-min circuit for a fuzzy inference engine).
    Defs. Cl. Constr. Br. at 6 (quoting, inter alia, ‘786 patent, Col. 8, lines 25-37). The Court finds
    that general references to other patents as “examples” of components of a structure without any
    detail as to implementation or combination is simply insufficient to identify a structure in the
    claims. This is fatal for the defendants’ claims. Accordingly, the Court finds that nothing in the
    defendants’ proposed claim construction helps them satisfy the “machine” prong of the MOT
    test.
    Second, the computing device referenced in the claims is incidental to the claimed
    invention and is not used for more than “insignificant postsolution activity,” and thus does not
    satisfy the machine prong. Diehr, 
    450 U.S. at 191
    . As in Flook, the computing device is merely
    a means of improving an existing process, which does not make the claims of the patents-in-
    dispute patentable. Flook, 
    437 U.S. at
    595 n. 18. Indeed, when a computer is functioning simply
    to speed up a process, this does not make the process patentable. CLS Bank Int’l, 
    768 F. Supp. 2d at 238-39
     (“In order for the addition of a machine to impose a meaningful limit on the scope
    of a claim, it must play a significant part in permitting the claimed method to be performed,
    rather than function solely as an obvious mechanism for permitting a solution to be achieved
    more quickly”); see also Cybersource, 654 F.3d at 1375-76 (case would be different if “as a
    practical matter, the use of a computer [was] required”). In the patents-in-dispute, the computing
    device referenced in the claims appears to be doing nothing more than speeding up the research
    and mental processes that a doctor normally goes through when evaluating the best treatment
    29
    options or regimen for a given patient. Thus, Claim 1 of the ‘786 patent does not satisfy the
    machine prong of the MOT test.
    2.      Claims of the Patents-in-Dispute Do Not Satisfy the Transformation Test
    To satisfy the “transformation” prong of the MOT test, a claimed process must
    “[transform] a particular article into a different state or thing.” Bilski I, 
    545 F.3d at 954
    .
    SmartGene argues that the claims of the patents-in-dispute “merely take one form of information
    (i.e., patient information, therapeutic treatment regimens and advisory information) and represent
    it in a different form (i.e., lists of therapeutic treatment regimens and advisory information)” and
    that “[s]uch manipulations of information . . . are insufficient to meet the ‘transformation’ prong
    of the MOT.” Pl.’s Mem. at 16. The defendants counter that “raw patient information is
    transformed into a treatment regimen which in turn transforms the patient’s body.” Defs.’ Mem.
    at 11. According to the defendants, this “system creates the ability for a physician to interact
    with a program and view and develop a treatment regimen for a patient.” 
    Id.
     This Court finds
    the defendants’ arguments unavailing and concludes that the patents do not satisfy the
    transformation prong of the MOT test.
    The Supreme Court and Federal Circuit have offered some guidance in deciphering
    whether a process satisfies the transformation prong. First, the “transformation must be central
    to the purpose of the claimed process” see Bilski I, 
    545 F.3d at 962
    , and the “mere manipulation
    or reorganization of data . . . does not satisfy the transformation prong.” CyberSource, 
    654 F.3d at 1375
    . Second, “[p]urported transformations or manipulations simply of public or private legal
    obligations or relationships, business risks, or other such abstractions cannot meet the test
    because they are not physical objects or substances, and they are not representative of physical
    objects or substances.” Bilski I, 
    545 F.3d at 963
    . Finally, as noted, the Supreme Court in
    30
    Prometheus recently rejected the Federal Circuit’s application of “transformation,” where the
    Federal Circuit concluded that claimed processes were patent eligible where they involved
    “transforming the human body.” Prometheus, 
    132 S. Ct. at 1302-1303
    . The Supreme Court in
    Prometheus, however, did not retreat from a transformation analysis as part of a subject matter
    patentability test under section 101.
    The Federal Circuit’s guidance in CyberSource is particularly instructive. In
    Cybersource, the Federal Circuit held that a method for detecting credit card fraud in internet
    commerce constituted ineligible patent subject matter. 
    Id.
     There, the parties sought patent
    protection over a process that compares databases comprised of credit card transaction history
    information to determine whether current purchases are indicative of credit card users’
    purchasing habits. 654 F.3d at 1367. The Federal Circuit concluded that such an invention does
    not constitute patent eligible subject matter because it “can be performed by human thought
    alone . . .” Id. at 1373. The Federal Circuit also explicitly stated that the mere use of the internet
    does not create patentable subject matter, because the internet is utilized as a “source of data,”
    and “mere [data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.” Id.
    at 1370 (quoting In re Grams, 
    888 F.2d 835
    , 840 (Fed. Cir. 1989)). The Federal Circuit found
    that the patents-in-dispute did not satisfy the transformation prong because “[t]he mere
    manipulation or reorganization of data . . . does not satisfy the transformation prong.” See
    CyberSource, 
    654 F.3d at 1375
    . This conclusion indicates that even if computers simplify data
    gathering and computation functions, a claimed invention is nevertheless unpatentable if it may
    be entirely performed through mental processes.
    Examining the Supreme Court and Federal Circuit precedent, as well as decisions in this
    Circuit, the Court concludes that, the ‘786 patent does not involve transformation. As in Bilski,
    31
    Cyberspace, and CLS Bank Int’l, the alleged transformation performed in the defendants’ patents
    is more akin to a manual reorganization of treatment options. This does not satisfy the
    transformation prong of the MOT test. See, e.g., CLS Bank Int'l, 
    768 F. Supp. 2d at 234-35
    (rejecting argument that “would convert almost any use of a computer, or other electronic device
    with memory, to a transformation under the MOT test simply because data would necessarily
    have to be manipulated . . . .”) (citations omitted).
    The defendants’ arguments to the contrary are not persuasive. Specifically, the
    defendants note that the Federal Circuit, in Bilski I, stated that “the transformation of . . . raw
    data into a particular visual depiction of a physical object on a display was sufficient to render
    that more narrowly-claimed process patent-eligible” and that “the electronic transformation of
    the data itself into a visual depiction . . . was sufficient.” See Defs.’ Mem. at 11 (quoting Bilski,
    
    545 F.3d at 963
     (referring to In re Abele, 
    684 F.2d 902
     (C.C.P.A. 1982)). Defendants’ reliance
    on Abele is misplaced. In Abele, the patent applicant sought to patent a process for improving
    the accuracy and reliability of CAT scan imaging techniques, while simultaneously reducing the
    X-ray exposure of the patient. Abele, 
    684 F.2d 902
    , 903 (C.C.P.A. 1982). This process of
    improving imaging is very different than the data manipulation at issue here. Unlike in Abele,
    the patents here do not manifest any sort of physical transformation, and therefore do not satisfy
    the transformation prong of the MOT. 16
    16
    The defendants further rely on an Eastern District of Virginia decision, VS Techs., LLC v. Twitter, Inc., No. 2:11-
    cv-43, 
    2011 U.S. Dist. LEXIS 114998
    , at *19 (E.D. Va. Oct. 4, 2011), where the court noted that a claim directed to
    the creation of an online community “involves a transformation in the sense that it creates the ability for people to
    interact in real time.” The defendants argue that “[i]n the same way the technology in [VS Tech] involved a
    transformation by creating the ability to interact in real time, the Asserted Claims involve a transformation by
    creating the ability for the user to interact with the program to develop a treatment regimen.” Defs.’ Mem. at 11-12.
    The Court does not find this argument convincing as there is nothing in the Supreme Court or Federal Circuit
    precedent that suggests data matching and ranking, as described in the patents-in-dispute, constitute a
    “transformation” of that data in a manner that would satisfy the machine or transformation test. Similarly, the
    argument by the defendants that their invention “transforms the patient’s body,” see 
    id. at 11
    , appears to be exactly
    the type of transformation expressly rejected by the Supreme Court in Prometheus.
    32
    D.      Patent Claims Do Not Constitute Eligible Subject Matter
    A claimed method may still constitute eligible subject matter despite failing to satisfy the
    MOT test. See Bilski II, 
    130 S. Ct. at 3226
    . The defendants assert that the MOT test is
    “disfavored,” and that the Court should instead be guided by the Federal Circuit’s reasoning in
    Ultramercial, LLC v. Hula, LLC, 
    657 F.3d 1323
    , 1329 (Fed. Cir. 2011). Defs.’ Mem. at 8. An
    examination of this Federal Circuit precedent, however, only reaffirms that the defendants’
    patents-in-dispute are abstract and do not constitute patent eligible subject matter.
    In Ultramercial, the Federal Circuit held that a patent claiming a method for “distributing
    copyrighted products (e.g. songs, movies, books) over the Internet where the consumer receives
    a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays
    for the copyrighted content,” constituted patentable subject matter. 
    657 F.3d at 1324
    . The
    Federal Circuit upheld the patent-eligibility of the mechanism, concluding that this patent “does
    not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract
    concept.” 
    Id. at 1329
    . Rather, it “claims a particular method for collecting revenue from the
    distribution of media products over the Internet.” 
    Id.
     This invention constituted patentable
    subject matter because the claim itself required complex computer programming and “controlled
    interaction with a consumer via an Internet website.” 
    Id. at 1330
    . Unlike the claims in
    Cybersource, the Federal Circuit concluded that the claims here were “something far removed
    from purely mental steps.” 
    Id. at 1329-1330
     (emphasis in original).
    While the claims in Ultramercial could not be performed as “purely mental steps,” and
    involved a number of steps, with complex computer programming, the defendants’ claimed
    inventions can be performed – and, in fact, are routinely performed – in the minds of physicians
    who are evaluating patients and selecting therapeutic treatment options for them. The patents-
    33
    in-dispute are thus more like the claimed invention in CyberSource – a process for detecting
    credit card fraud in Internet transactions – which the court concluded could be performed
    exclusively in the human mind. See CyberSource, 
    654 F.3d at 1373
    . As in CyberSource, the
    claims at issue involve the “organization of data” and do “not require the method to be
    performed by a particular machine . . .” 
    Id. at 1370
    . The claims thus suffer from the same
    defects as the claims in CyberSource and are not patentable.
    The Federal Circuit’s recent decision in DealerTrack only reinforces that the patents-in-
    dispute are not patentable. There, the Federal Circuit found that a process for automating credit
    applications by receiving credit applicant data from a source and then forwarding the data to
    potential creditors and forwarding the reply data to the first source, constituted ineligible patent
    subject matter because it sought to “‘[explain] the basic concept’ of processing information
    through a clearing-house, just as claim 1 in Bilski II ‘[explained] the basic concept of hedging.’”
    DealerTrack, Inc. v. Huber, Nos. 2009-1566, 2009-1588, 
    2012 U.S. App. LEXIS 1161
    , at *47
    (Fed. Cir. Jan. 20, 2012) (quoting Bilski II, 
    130 S. Ct. at 3231
    ). The Federal Circuit held that the
    claim was abstract because the method did not “impose meaningful limits on the claim’s scope.”
    Id. at *48 (quoting Bilski I, 
    545 F.3d at 961-62
    ). In so holding, the Federal Circuit rejected the
    assertion that a computer was critical to the process because “the computer here ‘can be
    programmed to perform very different tasks in very different ways[.]’” Id. at *48 (quoting
    Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 
    521 F.2d 1328
    , 1333 (Fed. Cir. 2008)).
    Thus, “it does not play a significant part in permitting the claimed method to be performed.” 
    Id.
    (citations and quotation marks omitted). The Federal Circuit found the patent invalid because the
    claims were “silent as to how a computer aids the method, the extent to which a computer aids
    the method, or the significance of a computer to the performance of the method.” 
    Id. at *48
    . In
    34
    addition, the claims did “not require a specific application” nor were they “tied to a particular
    machine.” 
    Id. at 49
    .
    In light of this precedent, the Court finds that the defendants’ claims mirror the mental
    processes that a physician performs, and therefore embody the “‘basic tools of scientific and
    technological work’ that are free to all men and reserved exclusively to none.” CyberSource,
    
    654 F.3d at 1373
     (quoting Benson, 
    409 U.S. at 67
    ). Furthermore, the computing device
    references in the defendants’ patents may be “programmed to perform very different tasks in
    very different ways,” and therefore cannot serve as a significant limitation or constraint on the
    claimed invention. DealerTrack, 
    2012 U.S. App. LEXIS 1161
    , at *48 (quoting Aristocrat, 521
    F. 3d at 1333). Like the courts in Cybersource and DealerTrack, the Court finds the defendants’
    invention unpatentable. 17
    E.       Claim Construction
    Finally, while it is not necessary for this Court to formally construct the claims, the Court
    notes that the defendants’ proposed construction of the disputed claims only reinforces that the
    17
    SmartGene argues that another reason the patents-in-dispute are unpatentable is that the patents are directed to
    software per se. Pl.’s Mem. at 13; Pl.’s Reply at 2. Specifically, SmartGene points to the language of the ‘786
    patent specification, which states that the invention may be constituted in “. . . an entirely software embodiment. . .”
    Pl.’s Mem. at 13 (quoting Ex. A., ‘786 patent, Col. 4, lines 17-20). SmartGene argues that “[s]uch lack of structure
    renders the claims unpatentable as directed to software per se. Id.; see also Ex. Parte Lection, Appeal No. 2009-
    012445, 2011 Pat. App. LEXIS 21213, *4 (BPAI Aug. 10, 2011) (“As such, claim 1 encompasses software per se
    and is therefore directed to nonstatutory subject matter.”); Ex Parte Barbee, Appeal No. 2009-009777, 2011 Pat.
    App. LEXIS 20090, at *3 (BPAI June 21, 2011) (“An embodiment that is software per se falls outside of the scope
    of § 101”); Ex parte Liebl, Appeal No. 2009-010624, 2010 Pat. App. LEXIS 14403 (BPAI Mar. 16, 2010) (finding
    that “the subject matter of the claims on appeal may be properly considered to directly and indirectly recite abstract
    logic, data structures or software per se which our earlier noted case law considers not to be within in any statutory
    category within 
    35 U.S.C. § 101
    ”); Ex Parte Venkata, Appeal 2009-007302 n.1, 2010 Pat. App. LEXIS 18234, at *8
    (BPAI Oct. 6, 2010) (noting that the specification “indicates that the service discovery functions performed by the
    recited agents may be implemented in software, firmware, hardware or a combination thereof” and thus finding “that
    the claimed agents comprised in the service discovery system can exist solely in software” and that “[r]eciting
    descriptive material per se (e.g., data structures and computer programs) . . . is non-statutory.”). The defendants do
    not directly address SmartGene’s software per se argument in their brief. When given an opportunity to respond to
    SmartGene’s software per se argument at the Motions Hearing, the defendants argued, inter alia, that “the software
    per se objection is mainly one that has been used in the context of prosecution, and is not a doctrine that has been
    relied on in the court’s recent jurisprudence in the 101 issue.” Tr. 31:19-22. Since this software per se objection is
    not necessary to resolve in this Motion, the Court declines to address it.
    35
    defendants’ claims are unpatentable. The claimed steps of the invention, and not the
    specification, must “impose meaningful limits on the claim’s scope,” see Bilski I, 
    545 F.3d at 961-62
    , in order to cabin the claimed invention’s potential reach. The claim language in Claim 1
    of the ‘786 patent fails to enforce any meaningful limits on the scope and breadth of the claimed
    invention. The defendants propose, for example, that the term “patient information” in Claim 1
    of the ‘786 patent needs no definition. While SmartGene proposes constructing the claim
    “patient information” to include “gender, age, weight, CD4+ cell information, hemoglobin
    information, neuropathy information, neutrophil information, pancreatitis, hepatic function, renal
    function, drug allergy and intolerance information, information for drug treatments for other
    conditions, historical information on prior therapeutic treatment regimens for a disease or
    medical condition, and prior patient information,” the defendants insist that the plain language of
    the claim should apply. Defs.’ Cl. Constr. Br. at 2. Likewise, SmartGene proposes that the term
    “knowledge base” be narrowly constructed to, at a minimum, limit the three databases to human
    medical information. 18 Id. at 3. The defendants decline any narrow construction and instead
    propose constructing the term “knowledge base” in Claim 1 of the ‘786 patent simply as
    “database.” Id. Thus, the contours of these patents with no definition as to which information is
    pertinent, combined with the broadest possible construction of the terms, could encompass far
    more than the common understanding of therapeutic treatment regimens and could, for example,
    include financial information about the patient and the most economic treatment options
    available. This is reminiscent of the situation in Benson, as discussed supra, where the Supreme
    18
    Specifically, SmartGene proposed that “[t]he term ‘first knowledge base’ should be construed as a database of
    information accumulated from a body of knowledge of human specialists in the field of therapeutic treatment
    regimens. The term ‘second knowledge base’ should be construed as a database of information distinct from the
    first knowledge base, wherein the second knowledge base is accumulated from a body of knowledge of human
    specialists in the field of expert rules. The term ‘third knowledge base’ should be construed as a database of
    information distinct from the first knowledge base and the second knowledge base, wherein the third knowledge
    base is accumulated from a body of knowledge of human specialists in the field of advisory information.” Defs.’ Cl.
    Constr. Br. at 3.
    36
    Court expressed concern that a claim was “so abstract and sweeping as to cover both known and
    unknown uses,” which could “vary from the operation of a train to verification of drivers’
    licenses to researching the law books for precedents” and “be performed through any existing
    machinery or future-devised machinery or without any apparatus.” Benson, 
    409 U.S. at 68
    .
    Indeed, the breadth of these proposed constructions only underlines the abstractness of Claim 1
    of the ‘786 patent. The defendants’ claims are “invalid as being directed to an abstract idea
    preemptive of a fundamental concept or idea that would foreclose innovation in this area.”
    DealerTrack, 
    2012 U.S. App. LEXIS 1161
    , at * 47; see also MySpace, Inc. v. Graphon Corp.,
    
    2012 U.S. App. LEXIS 4375
    , at *39 (Fed. Cir. Mar. 2, 2012) (J. Mayer, dissenting) (noting that
    patent claims over “abstract” concepts “fall outside the ambit of section 101 because they are too
    useful and too widely applied to possibly form the basis of any patentable invention”).
    IV.    CONCLUSION
    For the reasons discussed above, this Court finds that the defendants’ Patent Nos.
    6,081,786 and 6,188,988 B1 constitute ineligible subject matter under 
    35 U.S.C. § 101
    , and are
    therefore invalid. Accordingly, SmartGene’s Motion for Partial Summary Judgment, ECF No.
    47, is granted. Since the patents at issue are invalid, the remaining claims and counterclaims
    pending in the suit are dismissed. An Order consistent with this Opinion shall be filed.
    DATED: March 30, 2012
    /s/ Beryl A. Howell
    BERYL A. HOWELL
    United States District Judge
    37