Katherine Welles /
27 February 2019Americas

Immunity can’t protect university from patent challenge: Fed Circuit

The US Court of Appeals for the Federal Circuit yesterday rejected the University of Florida’s argument that its sovereign immunity protected a patent from section 101 scrutiny.

In a  decision handed down yesterday, February 26, the Federal Circuit affirmed the invalidity of a patent assigned to the University of Florida Research Foundation (UFRF).

The UFRF is the university’s support organisation, which assists with the research activities of the university faculty, staff and students.

In 2017, the support organisation sued General Electric Company, GE Medical Systems Information Technologies, and GE Medical Systems (GE) at the US District Court for the Northern District of Florida, alleging infringement of US patent 7,062,251.

The ‘251 patent, called “Managing critical care physiologic data using data synthesis technology”, describes a method and system for “integrat[ing] physiologic data from at least one bedside machine”.

GE, in response, moved to dismiss the suit, arguing that the claims of the patent are directed to ineligible subject matter under section 101.

The Florida court granted GE’s motion, after applying the two-step framework set out in Alice v CLS Bank and determining that the claims of the ‘251 patent are directed to an abstract idea and do not recite an inventive concept.

The university appealed against the decision, claiming that as it was an “arm of the state of Florida” it had sovereign immunity, meaning that it was exempt from GE’s section 101 eligibility challenge.

However, the Federal Circuit disagreed. It found that by bringing its claim of infringement, the university had waived its sovereign immunity.

“In sum, we hold that a section 101 eligibility challenge is a defence to a claim of infringement … Because GE’s section 101 eligibility challenge is a defence to UFRF’s claim, UFRF has waived sovereign immunity as to GE’s section 101 eligibility challenge,” said Circuit Judge Kimberly Moore, on behalf of the court.

The Federal Circuit then turned to the merits of GE’s challenge and concluded that the ‘251 patent was not patent eligible.

Moore added: “On its face, the ’251 patent seeks to automate ‘pen and paper methodologies’ to conserve human resources and minimise errors.

“This is a quintessential ‘do it on a computer’ patent: it acknowledges that data from bedside machines was previously collected, analysed, manipulated, and displayed manually, and it simply proposes doing so with a computer.”

On step two of Alice, the court found that the claims do no “more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”.

The Federal Circuit affirmed the lower court’s decision to grant GE’s motion to dismiss.

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