Bilski Blog

Octane Fitness and Patent Eligibility

By: Robert R. Sachs

The Supreme Court’s decision in the patent fee shifting case, Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184, has literally nothing to do with patent eligibility.  However, it does demonstrate an approach to statutory interpretation that the Court could readily apply to Section 101 in its upcoming decision in Alice Corp. v. CLS Bank.

In Octane Fitness, the issue before the Court was the standard for awarding “reasonable attorney fees to the prevailing party” in “exceptional cases” under the fee shifting provisions of 35 U.S.C. § 285.  The question was what counts as an exceptional case.  The Federal Circuit had adopted a rule requiring “material inappropriate conduct” by a party or that the case was both “objectively baseless” and “brought in subjective bad faith.” Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005).  The Supreme Court characterized the Brooks Furniture test as “unduly rigid” and “so demanding that it would appear to render § 285 largely superfluous” in view of the inherent power of courts to make exceptions to the general American rule against fee-shifting. Octane Fitness, Slip Op. at 7, 11.  The Court held than an exceptional case is “one that stands out from others with respect to the substantive strength of a party’s litigating position . . . or the unreasonable manner in which the case was litigated.” Id.

SmartGene v. ABL: Already on a Law School Exam

By: Robert R. Sachs

One of the Section 101 cases we're handling has already made it into a law school exam. In SmartGene v. ABL, the Federal Circuit ruled that claims to a medical expert system were not patent-eligible. On behalf of ABL, we recently filed a petition for certiorari, requesting the Supreme Court to vacate the Federal Circuit decision once it decides Alice Corp. v. CLS Bank, and remand to the Federal Circuit.

Prof. Jason Rantanen, at the University of Iowa College of Law, posted on Patently-O that he recently included claim 1 from ABL's U.S. 6,081,786, on the final exam for his patent law class, challenging them to argue why the claim is not patent-eligible. In an email exchange, Prof. Rantanen said that he chose ABL's patent claim for the exam to "force students to grapple with actual contemporary claims....This claim seemed like a great one to talk about from a PSM perspective." For context, here is the ABL patent claim:

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.