United States: ANOTHER ONE BITES THE DUST UNDER ALICE: Cogent Medicine's Database Patent Found Invalid Under Section 101 On Motion To Dismiss

Last Updated: October 14 2014
Article by Siddhartha Venkatesan

Software patents are dropping like flies.  Last week, we reported the first decision in the Northern District to invalidate a software patent under 35 U.S.C. Section 101 in the wake of Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).  In a similar ruling this week, Judge Ronald Whyte found that a patent held by Cogent Medicine, Inc. failed to claim patent-eligible subject matter, and granted a 12(b)(6) motion dismissing Cogent Medicine's patent infringement claims under section 101 in Cogent Medicine, Inc. v. Elsevier Inc., Nos. C-13-4479, -4483, -4486 (N.D. Cal. Oct. 3, 2014).

The patent at issue describes a database of medical resources that is searchable via a library interface.  The library interface includes a folder structure for different medical topics (for example, "lung cancer").  When a doctor or researcher opens a folder, the claimed method returns the most recent search results for the corresponding topic.  Representative claim 1 reads:

1.  A method for providing data to a user from one or more data sets, said method comprising:

accepting from a user and storing one or more search strategies directed to medical literature in data folders wherein said storage is for repeat use by a user, each of said one or more search strategies associated with one or more of said one or more data sets; and

accepting from said user a request to view medical information, and, based on said request, selectively providing data set information in said data folders comprising preselected medical information for said user or users from said one or more data sets, said medical information having been preselected and placed in said folder by a specialist for said user or users and

at least one of (a) medical information from said one or more associated data sets corresponding to one of said search strategies directed to medical literature wherein said medical information is added to the said one or more data sets since the last time said user accessed said one or more associated data sets; or (b) medical information corresponding to one of said search strategies directed to medical literature wherein said medical information is not limited in time.

The court first dealt with the threshold issue of whether it is proper to decide patentable subject matter before claim construction.  Citing Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), the court noted that even though "it will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis," it was not necessary here.

On the substantive § 101 question, the court undertook the two-prong analysis set out by Mayo v. Prometheus, 132 S. Ct. 1289 (2012).  As to the first prong, the court found that the challenged claims embody the abstract idea of "providing users with a personal library interface containing medical literature."  In the medical field, the court found, the alleged invention is just like "the longstanding practice of keeping an updated set of folders for supplying doctors with the latest medical knowledge."  Thus, Judge Whyte reasoned that, instead of having an assistant update the folders, the patent simply has a computer do the same thing.

As to the second prong of deciding whether the claim contains an "inventive concept," the court found that the element of preselecting medical information is "no more than a computer automation of what can be performed in the human mind, or by a human using a pen and paper."  Further, the court found that limiting an abstract idea to the medical field does not impart patent-eligibility, because then one could just "craft a set of claims that together preempt an entire abstract idea by limiting each individual claim to a specific field."

Finally, the court found that system and computer component claims at issue are no different from the method claims in substance, since they recite only "a handful of generic computer components configured to implement the same idea."

The recent run of Section 101 rulings in the Northern District follows post-Alice orders to dismiss on Section 101 grounds in several other jurisdictions, including Delaware and the Eastern District of Texas.  See, e.g., Genetic Techs. Ltd. v. Laboratory Corp. of Am. Holdings, 2014 WL 4379587 (D. Del. Sept. 3, 2014); Loyalty Conversion Systems v. Am. Airlines, Inc., No. 2:13-cv-655 (E.D. Tex. Sep. 3, 2014).  Thus, patent plaintiffs are well advised to pay careful attention to the nuances of Alice and its progeny prior to filing suit.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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