PATENTS - Smart Gene v. ABL - 101 invalidity

Claim found invalid under 101:

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.

The district court correctly held that the claim 1 method falls outside the eligibility standards of section 101 as that provision has been construed. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. 654 F.3d 1366, 1373 (Fed.Cir.2011); see also In re Grams, 888 F.2d 835, 840–41 (Fed.Cir.1989); In re Meyer, 688 F.2d 789, 794–95 (C.C.P.A.1982). As CyberSource explains, those precedents rest on Supreme Court decisions indicating that section 101covers neither “mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps. See Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972); Parker v. Flook, 437 U.S. 584, 589 (1978).

Those precedents cover this case. Claim 1 does no more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, to do what doctors do routinely. In three steps, claim 1 defines a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” ′786 patent, col. 17, lines 49–51. The method (1) “provid[es] patient information to a computing device” having routine input, memory, look-up, comparison, and output capabilities and that (2) “generat[es] ... a ranked listing of available therapeutic treatment regimens” and (3) “generat[es] ... advisory information for one or more therapeutic treatment regimens in said ranked listing.” Id. at col. 17, line 52, through col. 18, line 3. Claim 1 places only very broad limitations on a “computing device”: it must contain—like a doctor's mind—a set of “expert rules for evaluating and selecting” from a stored “plurality of different therapeutic treatment regimens,” as well as “advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens.” Id. at col. 17, lines 54–64.

The district court correctly held that the claim 1 method falls outside the eligibility standards of section 101 as that provision has been construed. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. 654 F.3d 1366, 1373 (Fed.Cir.2011); see also In re Grams, 888 F.2d 835, 840–41 (Fed.Cir.1989); In re Meyer, 688 F.2d 789, 794–95 (C.C.P.A.1982). As CyberSource explains, those precedents rest on Supreme Court decisions indicating that section 101 covers neither “mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps. See Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972); Parker v. Flook, 437 U.S. 584, 589 (1978).

Those precedents cover this case. Claim 1 does no more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, to do what doctors do routinely. In three steps, claim 1 defines a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” ′786 patent, col. 17, lines 49–51. The method (1) “provid[es] patient information to a computing device” having routine input, memory, look-up, comparison, and output capabilities and that (2) “generat[es] ... a ranked listing of available therapeutic treatment regimens” and (3) “generat[es] ... advisory information for one or more therapeutic treatment regimens in said ranked listing.” Id. at col. 17, line 52, through col. 18, line 3. Claim 1 places only very broad limitations on a “computing device”: it must contain—like a doctor's mind—a set of “expert rules for evaluating and selecting” from a stored “plurality of different therapeutic treatment regimens,” as well as “advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens.” Id. at col. 17, lines 54–64.

Like the processes claimed in Benson, the process of claim 1 “can be ... performed without a computer” or, alternatively, “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S. at 67. The claim does not purport to identify new computer hardware: it assumes the availability of physical components for input, memory, look-up, comparison, and output. Nor does it purport to identify any steps beyond those which doctors routinely and consciously perform. Our ruling is limited to the circumstances presented here, in which every step is a familiar part of the conscious process that doctors can and do perform in their heads.

The Supreme Court's post-CyberSource decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012), reinforces the application of Cyber–Source to decide the present case. The Supreme Court in Mayo, though addressing a case involving the “law of nature” exclusion from section 101, recognized that “mental processes” and “abstract ideas” (whatever may be the precise definition and relation of those concepts) are excluded from section 101.See 132 S.Ct. at 1289, 1293, 1297–98 (quotation marks omitted). Whatever the boundaries of the “abstract ideas” category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.

SmartGene, Inc. v. Advanced Biological Labs., SA, 2013-1186, 2014 WL 259824 (Fed. Cir. Jan. 24, 2014)