The invention was directed to the abstract idea of using a computer to gather, analyze, and display data, the court said.
The University of Florida Research Foundation owned U.S. Patent No. 7,062,251, covering a system for integrating medical data from bedside machines. The technology converts data streams into an independent format and displays them on a graphic interface. GE argued that the technology was directed to an abstract idea and ineligible for patent protection.
The U.S. District Court for the Northern District of Florida ruled the patent was invalid, and the U.S. Court of Appeals for the Federal Circuit agreed. The patent was directed to the unprotectable abstract idea of gathering and using data, the courts said.
“This is a quintessential ‘do it on a computer’ patent: it acknowledges that data from bedside machines 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,” the Federal Circuit said.
The court also said the technology didn’t contain an inventive concept that would make it patentable. “Here, the claims do no more than simply instruct the practitioner to implement the abstract idea on a generic computer,” the court said.
The court also rejected UF’s argument that the district court lacked jurisdiction based on sovereign immunity.
Sovereign immunity is a common-law concept that holds a government can be sued only if it consents. The issue drew a lot of attention when drugmaker Allergan was accused of engaging in a sham transfer of its patents on the blockbuster eye drug Restasis to the St. Regis Mohawk Tribe so it could use the tribe’s sovereign immunity to argue the patents weren’t subject to a challenge at the Patent Trial and Appeal Board (PTAB).
Law professors downplayed the significance of the appeals court’s ruling on sovereign immunity in the UF case.
“Though there is some similarity with the tribal sovereign immunity cases that have received attention recently, this case is actually much easier,” Steve Yelderman, a law professor at the University of Notre Dame, told Bloomberg Law.
Unlike Allergan, UF can’t complain it was hauled before an administrative agency to defend its patent, Yelderman said. “Instead, Florida was trying to prevent the defendant from raising patentable subject matter defenses at all.”
In the UF case, the state waived sovereign immunity by bringing the suit and opening the patent up to challenge as a defense to infringement, law professor Timothy R. Holbrook told Bloomberg Law. Holbrook teaches at Emory University and is the author of more than 40 publications on patent law.
This scenario is very different from states alleging sovereign immunity in proceedings before the PTAB, where the state is brought into the proceeding by a petitioner. In this case, Holbrook said, the state brought the lawsuit. There is waiver of sovereign immunity when a state brings an infringement claim, he said.
“The sovereign immunity argument by Florida was weak,” Michael Risch, associate dean of faculty research and development and professor of law at Villanova University School of Law, told Bloomberg Law. Risch focuses on intellectual property law, with an emphasis on patents and trade secrets.
“Allowing a defendant to challenge a state’s patent in the same action in which the state sued is not surprising,” he said.
"[T]he Federal Circuit vindicated the common-sense principle that a state agency that sues to enforce its patent will have to face all the same counter-arguments in court that a private patent owner does,” Yelderman said.
Patentability Ruling Unsurprising
And the patentability outcome wasn’t surprising either, Holbrook and Risch told Bloomberg Law.
The ruling on patentability “shows that taking something by hand and automating it with a computer is not going to be patent-eligible unless there is some technological advance in the process of automating it,” Holbrook said. “An unsurprising outcome.”
"[T]here’s nothing to see here, move along,” Risch said.
"[T]his was a patent begging for invalidation,” he said. "[T]his is the exact type of claim that is predictably considered abstract: gather data (of any kind), convert it (to some other kind), and display it (in some way). That’s about as abstract as you can get.”
Judge Kimberly A. Moore wrote the opinion, joined by Chief Judge Sharon Prost and Judge Evan J. Wallach.
Shore Chan DePumpo LLP represented UF. Reed Smith LLP represented GE.
The case is Univ. of Fla. Research Found. v. Gen. Elec. Co., Fed. Cir., No. 2018-1284, 2/26/19.