Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in University of Fla. Research Found., Inc. v. General Electric Company, 2018-1284 (February 26, 2019), affirming the district court’s dismissal of the University’s patent infringement suit. The University’s asserted patent covered a method and system for integrating physiologic data from bedside machines. The University sued GE for patent infringement, and GE moved to dismiss asserting the University’s patent claims were directed to patent ineligible subject matter under 35 U.S.C. § 101. The district court granted GE’s motion, and the University appealed.
On appeal, the Federal Circuit first considered whether the district court properly exercised jurisdiction over the § 101 challenge. The University argued that, as an arm of the State of Florida, it enjoys sovereign immunity, which it did not waive in connection with GE’s § 101 challenge. The Court rejected the University’s argument. The Court explained a state waives sovereign immunity when it brings suit in federal court, and this waiver applies not only to the state’s affirmative claims, but also to any defenses thereto. The Court held a § 101 challenge is a defense to a patent infringement claim. The University, therefore, waived sovereign immunity as to that challenge by bringing the infringement suit.
The Court next addressed the § 101 challenge, applying the two-step framework of Alice. Regarding step one, the Court concluded the patent “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.” The Court held such claims are directed to abstract ideas. The Court rejected the University’s argument that the step of converting data relying on a driver for each machine improved the functioning of the computer. The Court emphasized that the patent did not explain how the drivers do the conversion, that the drivers are described in purely functional terms, and that the “mere function of converting is not a ‘specific improvement to the way computers operate.’” Regarding step two, the Court held the claims did not contain any inventive concept because the patent itself asserted the steps could be carried out on any “general-purpose computer.” Because the claims merely instructed the implementation of an abstract idea on a generic computer, the Court held they are not patent eligible under § 101.