Computer-Aided Selection Method Fails Patent-Eligibility

In SmartGene, Inc. v. Advanced Biological Labs., S.A., No. 2013-1186 (Fed. Cir., Jan. 24, 2014), the Federal Circuit held that a patent claiming the use of a computer to implement routine mental information-comparison and rule-application processes to select a treatment for a patient fails patent-eligibility because the claims are directed to an abstract idea. The Federal Circuit, in this unpublished opinion, determined that the patent claims no more than the conscious process that doctors can and do perform in their heads. The decision suggests that those seeking to patent computer-aided diagnostic and therapeutic methods, useful in personalized medicine, must identify and claim "something more'" than the use of conventional technologies in a conventional manner to satisfy the evolving patent-eligibility standard.

Systems, Methods and Computer Program for Selection of Therapeutic Treatment Regimens

Defendant Advanced Biological Labs ("ABL") appealed the grant of summary judgement in favor of plaintiff SmartGene, Inc. ("SmartGene") that two of ABL's patents were invalid. See SmartGene, Inc. v. Adv. Biological Labs., 852 F. Supp.2d 42, recons. denied, 915 F.Supp.2d 69 (D.D.C. 2013). SmartGene sought declaratory judgment that it did not infringe two of Advanced Biological Labs ("ABL") patents, U.S. Patent No. 6,081,786 (the '786 Patent) and 6,188,988 (the '988 Patent), directed to methods, systems and computer programs that guide the selection of a treatment regimen for a patient with a known disease or medical condition. Representative claim 1 of the '786 patent recites:

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...