University of Florida Research v. General Electric Company , 916 F.3d 1363 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSITY OF FLORIDA RESEARCH
FOUNDATION, INC.,
Plaintiff-Appellant
v.
GENERAL ELECTRIC COMPANY, GE MEDICAL
SYSTEMS INFORMATION TECHNOLOGIES, INC.,
GE MEDICAL SYSTEMS, INC.,
Defendants-Appellees
______________________
2018-1284
______________________
Appeal from the United States District Court for the
Northern District of Florida in No. 1:17-cv-00171-MW-
GRJ, Judge Mark E. Walker.
______________________
Decided: February 26, 2019
______________________
MICHAEL W. SHORE, Shore Chan DePumpo LLP, Dal-
las, TX, argued for plaintiff-appellant. Also represented by
ALFONSO CHAN, RUSSELL J. DEPALMA, ANDREW M.
HOWARD.
JAMES CHRISTOPHER MARTIN, Reed Smith LLP, Pitts-
burgh, PA, argued for defendants-appellees. Also repre-
sented by BRIAN D. ROCHE, Chicago, IL; CHRISTINE M.
2 UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO.
MORGAN, DAVID THOMAS POLLOCK, San Francisco, CA;
GERARD M. DONOVAN, Washington, DC.
______________________
Before PROST, Chief Judge, MOORE and WALLACH, Circuit
Judges.
MOORE, Circuit Judge.
The University of Florida Research Foundation, Inc.
(“UFRF”) is the assignee of U.S. Patent No. 7,062,251, ti-
tled “Managing Critical Care Physiologic Data Using Data
Synthesis Technology.” In 2017, UFRF sued General Elec-
tric Company, GE Medical Systems Information Technolo-
gies, Inc., and GE Medical Systems, Inc. (collectively, “GE”)
in the United States District Court for the Northern Dis-
trict of Florida, alleging infringement of the ’251 patent.
GE moved to dismiss under Federal Rule of Civil Proce-
dure 12(b)(6), arguing the claims of the ’251 patent are di-
rected to ineligible subject matter under 35 U.S.C. § 101.
The district court granted GE’s motion. Applying the two-
step framework set forth in Alice Corp. Party Ltd. v. CLS
Bank International, 573 U.S. 208, 217 (2014), the district
court determined the claims of the ’251 patent are directed
to an abstract idea and do not recite an inventive concept.
UFRF appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1). We affirm.
SOVEREIGN IMMUNITY
Before reaching the merits of GE’s § 101 eligibility
challenge to the ’251 patent, we must consider whether the
district court had subject matter jurisdiction to hear that
challenge in the first place, for UFRF argues it did not. Ac-
cording to UFRF, as an arm of the State of Florida, it enjoys
sovereign immunity under the Eleventh Amendment, and
it has not waived that immunity as to GE’s § 101 eligibility
challenge. We do not agree.
UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO. 3
The Eleventh Amendment provides that: “The Judicial
power of the United States shall not be construed to extend
to any suit in law or equity, commenced or prosecuted
against one of the United States by Citizens of another
State . . . .” U.S. Const. amend. XI. “[A] state waives its
Eleventh Amendment immunity when it consents to fed-
eral court jurisdiction by voluntarily appearing in federal
court,” as UFRF has here. Regents of the Univ. of N.M. v.
Knight, 321 F.3d 1111, 1124 (Fed. Cir. 2003) (citing Clark
v. Bernard, 108 U.S. 436, 447 (1883)); Regents of the Univ.
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564–65 (Fed. Cir.
1997) (“[T]he Eleventh Amendment applies to suits
‘against’ a state, not suits by a state.”). That waiver ex-
tends “not only to the cause of action but also to any rele-
vant defenses and counterclaims.” Vas-Cath, Inc. v.
Curators of Univ. of Mo., 473 F.3d 1376, 1381 (Fed. Cir.
2007). The parties agree that here there are no counter-
claims. At issue, then, is whether GE’s § 101 eligibility
challenge is a defense to UFRF’s claim of infringement. We
hold that it is.
Under 35 U.S.C. § 282(b), “defenses in any action in-
volving the . . . infringement of a patent,” include the “con-
dition[s] for patentability” set forth in Part II of Title 35.
According to UFRF, these “condition[s] for patentability”
include those in §§ 102 and 103, but not those in § 101. We
have held, though, that § 282 is not so limited. In Dealer-
track, Inc. v. Huber, for example, we held that “the ‘de-
fenses provided in the statute,’ § 282, include not only the
‘conditions of patentability’ in §§ 102 and 103, but also
those in § 101.” 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012).
Under Dealertrack, § 282’s defenses include a § 101 eligi-
bility challenge like GE’s.
Our holding in Dealertrack is not undermined by SCA
Hygiene Products Aktiebolag v. First Quality Baby
Products, LLC, 137 S. Ct. 954 (2017), as UFRF contends.
SCA Hygiene held that the equitable defense of laches was
not available to an accused infringer within the statute of
4 UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO.
limitations set out in § 282. Id. at 961–63. As the Supreme
Court explained, “applying laches within a limitations
period specified by Congress would give judges a
‘legislation-overriding’ role that is beyond the Judiciary’s
power” and effectively “jettison Congress’ judgment on the
timeliness of a suit.” Id. at 960. The “legislation-
overriding” concern in SCA has no analogue for a § 101
eligibility challenge: Unlike laches, which conflicts with
the statute of limitations set forth in § 282, treating a § 101
eligibility challenge as a defense to a claim of patent
infringement poses no conflict with § 282 and, thus, no risk
of “jettison[ing] Congress’ judgment.” We do not read SCA
Hygiene to undermine our holding in Dealertrack.
Even if § 282 did not extend to a § 101 eligibility chal-
lenge, such a challenge would still be a defense to a claim
of infringement. 1 We and the Supreme Court have long
treated § 101 eligibility as a “condition[] of patentability”
alongside §§ 102 and 103. See, e.g., Graham v. John Deere
Co., 383 U.S. 1, 12 (1966) (“The Act sets out the conditions
of patentability in three sections . . . novelty and utility as
articulated and defined in § 101 and § 102, and nonobvi-
ousness . . . as set out in § 103.”); Versata Dev. Gr., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1330 (Fed. Cir. 2015) (“It
would require a hyper-technical adherence to form rather
than an understanding of substance to arrive at a conclu-
sion that § 101 is not a ground available to test patents.”);
Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543
F.3d 657, 661 (Fed. Cir. 2008) (“It has long been understood
that the Patent Act sets out the conditions for patentability
in three sections: sections 101, 102, and 103.”). And we and
1 It cannot fairly be suggested that the “defenses”
enumerated in § 282 are the only defenses available to an
accused infringer. See, e.g., Fed. R. Civ. P. 12(b) (listing
“defense[s] to a claim for relief”).
UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO. 5
the Supreme Court have entertained § 101 eligibility chal-
lenges brought to defend against claims of infringement.
See, e.g., Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75−76 (2012); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1368 (Fed. Cir. 2011); Re-
search Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859,
862 (Fed. Cir. 2010). We see no reason to depart from this
practice now.
In sum, we hold that a § 101 eligibility challenge is a
defense to a claim of infringement. By bringing its claim of
infringement, UFRF waived its sovereign immunity “not
only [as] to the cause of action but also [as] to any relevant
defenses,” Vas-Cath, 473 F.3d at 1381. Because GE’s § 101
eligibility challenge is a defense to UFRF’s claim, UFRF
has waived sovereign immunity as to GE’s § 101 eligibility
challenge. The district court had subject matter jurisdic-
tion to hear that challenge.
ELIGIBILITY UNDER § 101
We turn now to the merits of GE’s § 101 eligibility chal-
lenge. The ’251 patent describes a method and system for
“integrat[ing] physiologic data from at least one bedside
machine.” ’251 patent at 3:3–6. The system includes a
“bedside device” connected to the “bedside machines” that
“convert[s] received data streams” from the bedside ma-
chines “to a format independent of any particular bedside
machine.” Id. at 6:64–7:4, 7:14–31. Such conversion may
rely on one or more “drivers” specific to each bedside ma-
chine. Id. at 7:48–56. “The standardized data can be con-
veyed to the bedside device [] for display” on a graphical
user interface. Id. at 8:66–67.
Claim 1 is representative 2:
2 While UFRF disputes on appeal whether claim 1 is
representative, UFRF agreed below that claim 1 could be
6 UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO.
1. A method of integrating physiologic treatment
data comprising the steps of:
receiving physiologic treatment data from
at least two bedside machines;
converting said physiologic treatment data
from a machine specific format into a ma-
chine independent format within a compu-
ting device remotely located from said
bedside machines;
performing at least one programmatic ac-
tion involving said machine-independent
data; and
presenting results from said programmatic
actions upon a bedside graphical user in-
terface.
Alice articulated a two-step framework for assessing el-
igibility under § 101. 573 U.S. at 217. At step one, we de-
termine whether a claim is “directed to a patent-ineligible
concept,” such as an abstract idea. Id. at 218. If so, we
determine at step two whether the claim “contains an ‘in-
ventive concept’ sufficient to ‘transform’ the claimed ab-
stract idea into a patent-eligible application.” Id. at 221.
Here, the district court determined on GE’s motion to
dismiss that the ’251 patent claims were not eligible under
§ 101. J.A. 28. At Alice step one, it determined the claims
are directed to the abstract idea of “collecting, analyzing,
manipulating, and displaying data.” J.A. 15. At step two,
treated as representative “so long as Claim 1 is construed
in light of the details outlined in the other dependent
claims and the specification[].” J.A. 8. Because the district
court so construed claim 1, and we do so on appeal, we treat
claim 1 as representative.
UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO. 7
it determined the claims did not recite an inventive con-
cept. J.A. 26.
We review a district court’s dismissal for failure to
state a claim under the law of the regional circuit, here the
Eleventh, which reviews dismissal for failure to state a
claim de novo. Aatrix Software, Inc. v. Green Shades Soft-
ware, Inc., 882 F.3d 1121, 1124 (Fed. Cir. 2018); Chaparro
v. Carnival Corp., 693 F.3d 1333, 1335 (11th Cir. 2012).
Eligibility is a question of law based on underlying facts
that, ultimately, we review de novo. SAP Am. v. InvestPic,
LLC, 890 F.3d 1016, 1020 (Fed. Cir. 2018). Because we
agree the ’251 patent claims are directed to ineligible sub-
ject matter under § 101, we affirm the district court’s dis-
missal.
According to the ’251 patent, “[m]ost health care facili-
ties . . . acquire bedside patient information using pen and
paper methodologies, such as flowsheets and patient
charts.” ’251 patent at 1:21–23. “Portions of these flow-
sheets,” it teaches, “can be manually entered into infor-
mation systems to preserve patient information for
administrative and research purposes.” Id. at 1:32–34.
The ’251 patent identifies two problems with such manual
entry: it “can be very time-consuming and expensive” and
“transcription errors can occur . . . which can result in im-
proper treatment.” Id. at 1:37–41; see also id. at 2:3–5
(“This manual data entry process consumes substantial hu-
man resources and increases the likelihood of typograph-
ical errors.”). These “shortcomings,” it explains, “can be
highly problematic” in the “complex, fast-paced” environ-
ment in which physicians work, potentially “result[ing] in
life altering consequences.” Id. at 1:42–47, 54–56.
These “pen and paper methodologies,” the ’251 patent
teaches, are the result of “data integration difficulties.” Id.
at 2:16–18. Since each bedside machine “transmit[s] data
in a proprietary manner using different data formats and
protocols,” a bedside device can only integrate data from
8 UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO.
multiple bedside machines using “tailored application[s]
. . . uniquely written for [each] particular type of bedside
machine.” Id. at 2:26–34. Accordingly, the ’251 patent pro-
poses replacing the “pen and paper methodologies” with
“data synthesis technology” in the form of “device drivers
written for the various bedside machines” that allow the
bedside device to present data from the various bedside
machines “in a configurable fashion within a single inter-
face.” Id. at 3:3–15.
On its face, the ’251 patent seeks to automate “pen and
paper methodologies” to conserve human resources and
minimize errors. This is a quintessential “do it on a com-
puter” patent: it acknowledges that data from bedside ma-
chines was previously collected, analyzed, manipulated,
and displayed manually, and it simply proposes doing so
with a computer. We have held such claims are directed to
abstract ideas. See, e.g., Intellectual Ventures I LLC v. Cap-
ital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(holding abstract claims “directed to . . . collecting, display-
ing, and manipulating data”); Elec. Power Grp., LLC v. Al-
stom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (holding
abstract claims directed to “collecting information, analyz-
ing it, and displaying certain results of the collection and
analysis”). That the automation can “result in life altering
consequences,” ’251 patent at 1:54−56, is laudable, but it
does not render it any less abstract.
The ’251 patent nowhere identifies, and we cannot see
in the claims, any “specific improvement to the way com-
puters operate.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016). The claimed “receiving physi-
ologic treatment data from at least two bedside machines”
employs “any serial connection . . . that can convey infor-
mation as a serial data stream,” including the “RS-232 con-
nector” used in prior art bedside devices. ’251 patent at
2:25–27, 7:4–13. The claimed “programmatic action involv-
ing said machine-independent data” can be performed us-
ing “[a]ny kind of computer system or other apparatus,”
UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO. 9
including a “general-purpose computer system.” Id. at
13:31–37. And while the claims recite “presenting results
from said programmatic actions upon a bedside graphical
user interface [“GUI”],” the ’251 patent explains “the in-
vention is not limited by the particular GUI or data entry
mechanisms contained within views of the GUI.” Id. at
13:16–18.
The claimed “converting said physiologic treatment
data from a machine specific format into a machine inde-
pendent format within a computing device remotely located
from said bedside machines” relies on “a driver for each dif-
ferent bedside machine” that “can interpret device specific
protocols for data streams of the bedside machine.” Id. at
7:48–56. UFRF urges that this “converting” improves the
functioning of the computer, likening the ’251 patent
claims to those held eligible in Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017). We are not
persuaded.
In Visual Memory, the claims recited “an enhanced
computer memory system” that used “programmable oper-
ational characteristics configurable based on the type of
processor” to “enabl[e] interoperability with multiple dif-
ferent processors.” Id. at 1259–60. As the patent ex-
plained, the enhanced computer memory system
“outperform[ed] a prior art memory system . . . armed with
‘a cache many times larger than the cumulative size of the
subject caches.’” Id. at 1259. The patent did not merely
claim this enhancement to the computer memory system;
it explained how it worked, appending “263 frames of com-
puter code.” Id. at 1261.
The ’251 patent is different. Neither the ’251 patent,
nor its claims, explains how the drivers do the conversion
that UFRF points to. That is, the drivers are described in
purely functional terms: they “facilitate data exchanges,”
“convert received data streams to a format independent of
any particular bedside machine,” “translate the data
10 UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO.
stream,” “interpret data streams,” “facilitate communica-
tions with the bedside machine,” and “interpret [discrete]
segments” in a “data stream for the machine.” Id. at 4:16–
18, 7:28–31, 7:48–56, 9:30–32, 9:34–40. The claims fare no
better. Only dependent claim 10 even mentions a “driver,”
and it is again recited in purely functional language: “at
least one bedside machine configured for particular ones of
said bedside machines to facilitate data exchanges between
said bedside machines and said bedside computing device.”
The mere function of converting is not a “specific improve-
ment to the way computers operate.” Enfish, 822 F.3d at
1336.
The ’251 patent “fails to provide any technical details
for the tangible components, . . . instead predominately de-
scrib[ing] the system and methods in purely functional
terms.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 612 (Fed. Cir. 2016). We hold at Alice step one that
representative claim 1 is directed to the abstract idea of
“collecting, analyzing, manipulating, and displaying data.”
The ’251 patent claims fare no better at Alice step two.
UFRF argues the claims recite more than “well-under-
stood, routine, conventional activit[ies]” because the
claimed “converting” takes place at a location remote from
the bedside machines. Alice, 573 U.S. at 225. It points us
to BASCOM Global Internet Services, Inc. v. AT&T Mobil-
ity LLC, where we found an inventive concept in “the in-
stallation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features
specific to each end user.” 827 F.3d 1341, 1350 (Fed. Cir.
2016). We are not persuaded.
In BASCOM, “the patent describe[d] how its particular
arrangement of elements [was] a technical improvement
over prior art ways of filtering such content,” id. at 1350,
but the ’251 patent does not. On the contrary, it provides
that “[t]he present invention . . . can be realized in a cen-
tralized fashion in one computer system or in a distributed
UNIVERSITY OF FLORIDA RESEARCH v. GENERAL ELEC. CO. 11
fashion” or “[a]ny kind of computer system or other appa-
ratus adapted for carrying out the methods described
herein.” ’251 patent at 13:27–33. The ’251 patent claims
recite the abstract idea of “collecting, analyzing, manipu-
lating, and displaying data,” and the ’251 patent proposes
using “a general-purpose computer” to carry it out. Id. at
13:33–37. As BASCOM recognized, claims like these that
“merely recite the abstract idea . . . along with the require-
ment to perform it on . . . a set of generic computer compo-
nents” do not contain an inventive concept. 827 F.3d at
1350. “An inventive concept . . . cannot simply be an in-
struction to implement or apply the abstract idea on a com-
puter.” Id. at 1349.
Here, the claims do no “more than simply instruct the
practitioner to implement the abstract idea . . . on a generic
computer.” Alice, 573 U.S. at 225. We hold that they are
not patent eligible under § 101.
CONCLUSION
Because we hold that the district court had subject
matter jurisdiction to hear GE’s § 101 eligibility challenge
to the ’251 patent, and we agree the ’251 patent claims are
ineligible under § 101, we affirm the district court’s grant
of GE’s motion to dismiss.
AFFIRMED