Florida fails to convince Federal Circuit that a defense to patent infringement isn't a defense to patent infringement
University of Florida Research Foundation, Inc.
General Electric Company, et al.
Decided: February 26, 2019
§282(b) explains that the defenses available in a patent infringement litigation include the “condition[s] for patentability;” 35 U.S.C. §§102 and 103 are titled “conditions for patentability; novelty,” and “conditions for patentability; non-obvious subject matter.” Is §101—which does not include the phrase “conditions for patentability” in its title—a defense to a claim of patent infringement? In a case involving an assertion of sovereign immunity, the Federal Circuit said that it is.
The University of Florida Research Foundation (UFRF) sued GE for allegedly infringing US patent 7,062,251, which relates to methods for automating the collection of vital signs and other data associated with hospital patients. GE filed a motion to dismiss on the grounds that the ‘251 patent fails to meet the patent eligibility requirements of §101; the district court granted the motion.
On appeal, UFRF recognized that by suing GE for patent infringement, it had waived its 11th amendment immunity with respect to both the infringement claims and to any relevant defenses and counterclaims. But UFRF argued that it had not waived its immunity as to GE’s motion to dismiss, because §101—which does not include the phrase “condition for patentability” in its title—does not qualify as patent litigation defense under §282(b).
In rejecting this argument, the panel held that treating a §101 challenge as a
defense to a claim for patent infringement does not conflict with §282(b), and that for decades, both the Supreme Court and the Federal Circuit have treated patent eligibility under §101 as a “condition for patentability” alongside §§102 and 103.
The panel then addressed the merits of the district court’s §101 ruling. Using the two-step Alice test for patent eligibility, the Federal Circuit found at step one that the claim—which described the automation of data entry tasks that had previously been performed manually—was directed to the abstract idea of “collecting, analyzing, manipulating and displaying data.”
Having found that the claim was directed to a patent ineligible concept, the Court then turned to step two of the Alice test, which asks whether the claim contains an inventive concept sufficient to transform the abstract idea it contains into a patent-eligible application. UFRF argued that the claims (which convert data from patient bedside machines into a “machine independent format”) satisfy Alice step two because they improve the functioning of a computer. The Federal Circuit disagreed, explaining that the asserted claims are not patent-eligible because they do no more than instruct the practitioner to implement the abstract idea (collecting, analyzing, manipulating and displaying data) on a generic computer, and the specification fails to disclose any technical details describing how the claimed data conversion takes place.