NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

SMARTGENE, INC.,

Plaintiff-Appellee,

v.

ADVANCED BIOLOGICAL LABORATORIES, SA,

AND ABL PATENT LICENSING TECHNOLOGIES, 

SARL,

Defendants-Appellants.

______________________ 

2013-1186

______________________ 

Appeal from the United States District Court for the 

District of Columbia in No. 08-CV-0642, Judge Beryl A. 

Howell. 

______________________ 

Decided: January 24, 2014 

______________________ 

FREDERICK N. SAMUELS, Cahn & Samuels, LLP, of 

Washington, DC, argued for plaintiff-appellee. With him 

on the brief was MAURICE U. CAHN. 

ROBERT R. SACHS, Fenwick & West, LLP, of San Francisco, California, argued for defendants-appellants. With 

him on the brief were MICHAEL J. SACKSTEDER, DANIEL R.

BROWNSTONE, and JEFFREY V. LASKER. Of counsel on the 
2 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB

brief was EDWARD W. GOLDSTEIN, Goldstein Law, 

P.L.L.C., of Houston, Texas. 

______________________ 

Before LOURIE, DYK, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge. 

SmartGene, Inc. brought this action against Advanced 

Biological Laboratories, SA, and ABL Patent Licensing 

Technologies, SARL (collectively, ABL), seeking a declaratory judgment that it did not infringe two of ABL’s patents, U.S. Patent Nos. 6,081,786 and 6,188,988, and that 

both patents were invalid. The district court granted 

summary judgment that all claims of both patents were 

ineligible for patent protection under 35 U.S.C. § 101. See 

SmartGene, Inc. v. Adv. Biological Labs., SA, 852 F. Supp. 

2d 42, 62 (D.D.C. 2012), reconsideration denied, 915 F. 

Supp. 2d 69 (D.D.C. 2013). We affirm.

BACKGROUND

Each of the two patents here is entitled “Systems, 

Methods and Computer Program Products for Guiding the 

Selection of Therapeutic Treatment Regimens.” In each, 

the key claims are independent Claims 1, 23, and 45,

which describe a method, a system, and a computer 

program, respectively, for guiding the selection of a 

treatment regimen for a patient with a known disease or 

medical condition. Claim 1 of the ’786 patent reads:

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 
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 3

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. 

’786 patent, col. 17, line 49, through col. 18, line 4. Claim 

1 of the ’988 patent is nearly identical. See ’988 patent, 

col. 17, line 53, through col. 18, line 12. Claim 23 in each 

patent claims “[a] system” rather than a method, but 

otherwise is similar in content. See ’786 patent, col. 19, 

lines 22-45; ’988 patent, col. 23, lines 32-59. Claim 45 in 

each patent has similar content, but claims a “computer 

program product comprising a computer usable storage 

medium having computer readable program code means 

embodied in the medium.” See ’786 patent, col. 20, line

61, through col. 21, line 22; ’988 patent, col. 21, lines 16-

48. For reasons to be indicated, we need not be more 

precise about the claims other than claim 1 of the ’786 

patent. 

In May 2008, SmartGene filed this action against 

ABL, seeking a declaratory judgment that, among other 

things, the two patents were ineligible for protection 
4 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB

under section 101. ABL counterclaimed, asserting infringement of Claims 1 and 23 of both patents. To establish that an actual controversy existed between the 

parties, SmartGene’s complaint identified a prior lawsuit

by ABL against SmartGene, in which ABL’s complaint 

alleged infringement of “at least claim 1 of each of the 

’786 and ’988 Patents.” J.A. 59. That earlier infringement action, filed in the Eastern District of Texas, had 

been dismissed for lack of personal jurisdiction before 

SmartGene initiated this declaratory-judgment action. 

The present case was stayed until September 2011 while

the Patent and Trademark Office reexamined the ’786 

and ’988 patents on prior-art, but not section 101, 

grounds. The PTO ultimately concluded that all of the 

patents’ claims were patentable over the prior art presented during the reexaminations. 

In December 2011, SmartGene moved for summary 

judgment that “all of the claims” of the ’786 and ’988 

patents are ineligible for a patent under section 101. 

Mem. in Supp. of Partial Summ. J.at 1, SmartGene, Inc. v. 

Adv. Biological Labs, SA, No. 08-CV-0642 (D.D.C. Dec. 12, 

2011), ECF 47. Expressly asserting that “for the purpose 

of the § 101 analysis, claim 1 of the ’786 patent is representative of all of the claims of the patents-in-suit,” 

SmartGene’s motion limited its elaboration of its arguments for ineligibility to that claim. J.A. 381. In its 

responsive briefing opposing summary judgment, ABL 

never contested SmartGene’s characterization of claim 1 

of the ’786 patent as representative of all claims of both 

patents. Opp. to Mot. for Partial Summ. J., SmartGene, 

No. 08-CV-0642 (D.D.C. Dec. 27, 2011), ECF 51. At the 

oral argument on the summary-judgment motion, ABL 

did argue that “system” claims require a different analysis from “method” claims. See J.A. 2789-91 (“[F]or a 

system claim, there is a little bit different analysis because claiming an actual system . . . makes it even less 

abstract because it’s not just a method . . . it is even more 
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 5

intimately connected to the computer, as it is the system.”). 

Based on the failure of ABL’s briefing to contest 

SmartGene’s characterization of claim 1 of the ’786 patent 

as representative of all claims, the district court found 

“that the differences between the various method and 

system claims within the patents-in-dispute are immaterial with respect to whether the patents constitute eligible 

subject matter under 35 U.S.C. § 101” and, therefore, 

analyzed only claim 1 of the ’786 patent. SmartGene, Inc., 

852 F. Supp. 2d at 45-46. The district court concluded 

that the claim does “no more than describe . . . an abstract 

mental process engaged in routinely, either entirely 

within a physician’s mind, or potentially aided by other 

resources in the treatment of patients.” Id. at 55. The 

court held claim 1 of the ’786 patent, and hence all asserted claims, “invalid” under section 101. Id. at 66. 

ABL moved for reconsideration. The court denied the 

motion. It again reiterated that ABL had not contested 

the representativeness of claim 1 of the ’786 patent in its 

papers opposing summary judgment and, even at the 

argument on the motion, had not provided any reason for 

distinguishing other claims from that one. SmartGene, 

915 F. Supp. 2d at 75-76. 

ABL appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).

DISCUSSION

Review of a grant of summary judgment is de novo. 

Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 

1341-42 (Fed. Cir. 2013). Patent eligibility under section 

101 is an issue of law. Bancorp Servs., LLC v. Sun Life 

Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 

2012). 
6 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB

A 

ABL contends that, even if claim 1 of the ’786 patent 

is invalid, the district court erred in invalidating all 

claims of the two patents on that basis. Neither of ABL’s 

arguments to support that contention has merit.

First, SmartGene unambiguously moved for summary 

judgment that all claims of the ’786 and ’988 patents—

not, as ABL argues, only claims 1 and 23 of both—were 

ineligible under section 101. See SmartGene, 915 F. 

Supp. 2d at 73-74 (“[ABL’s] assertions in this regard are 

patently false . . . . SmartGene consistently asserted that 

it was contesting the validity of all of the claims in both 

the ’786 patent and the ’988 patent.”). At the outset of 

this action, SmartGene’s complaint sought a declaratory 

judgment that the ’786 and ’988 patents, without limitation, were ineligible for patent protection. See J.A. 60-61. 

Although ABL counterclaimed for infringement of only 

claims 1 and 23 of each patent, SmartGene never narrowed the scope of its declaratory-judgment claims. When 

later moving for summary judgment, SmartGene expressly placed all claims at issue, asserting that “the patentsin-suit are facially invalid as directed to non-statutory 

subject matter under 35 U.S.C. § 101.” J.A. 366 (emphasis added); see also J.A. 374 (arguing in briefing accompanying the summary-judgment motion that “all of the 

claims of the patents-in-suit are invalid”). Thus, the 

district court did not err in addressing all claims of the 

’786 and ’988 patents. 

We see no jurisdictional barrier to the district court’s 

ruling on all of the claims. The eligibility of all claims 

under section 101 presented a case or controversy. ABL 

never argued that the district court lacked jurisdiction 

over any of SmartGene’s claims. And ABL had sued 

SmartGene in an earlier action, in Texas, alleging infringement of both patents without limitation to particular claims. Given that complaint, we see no reason for 
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 7

concluding that SmartGene failed to meet its “burden of 

establishing the existence of an actual case or controversy” as to all claims of both patents. MedImmune, Inc. v. 

Genentech, Inc., 549 U.S. 118, 140 (2007). 

Second, not only were all claims properly before the 

district court on summary judgment, but the court could 

properly rest its judgment on its analysis of claim 1 of the 

’786 patent. In its summary-judgment filings, SmartGene 

expressly asserted that claim 1 was representative and 

that any differences between the claims are immaterial 

under section 101, see J.A. 381, and ABL did not dispute 

that characterization in its briefing. It is well established 

that arguments that are not appropriately developed in a 

party’s briefing may be deemed waived. See, e.g., 

SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 

1312, 1320 (Fed. Cir. 2006) (collecting cases). During the 

summary-judgment oral argument, ABL alluded to “a 

different analysis as to the abstractness issue” between 

system and method claims. J.A. 2789-91. But the district 

court acted well within its discretion in concluding, as it 

explained on reconsideration, that such passing assertions 

did not amount to a developed argument for different 

treatment, especially in light of ABL’s complete failure to 

raise the issue in its briefing. We view the court’s ruling 

as essentially one that ABL forfeited any argument that 

any patent claims here are to be treated differently from 

claim 1 of the ’786 patent. 

B 

The district court correctly held that the claim 1 

method falls outside the eligibility standards of section 

101 as that provision has been construed. This conclusion 

follows from CyberSource Corp. v. Retail Decisions, Inc., 

where, based on earlier precedents, this court held that 

section 101 did not embrace a process defined simply as 

using a computer to perform a series of mental steps that 

people, aware of each step, can and regularly do perform 
8 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB

in their heads. 654 F.3d 1366, 1373 (Fed. Cir. 2011); see 

also In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989); In 

re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982). As CyberSource explains, those precedents rest on Supreme 

Court decisions indicating that section 101 covers neither 

“mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke 

a computer and its basic functionality for implementing 

such mental processes, without specifying even arguably 

new physical components or specifying processes defined 

other than by the mentally performable steps. See 

Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972); Parker v. 

Flook, 437 U.S. 584, 589 (1978).

Those precedents cover this case. Claim 1 does no 

more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, 

to do what doctors do routinely. In three steps, claim 1 

defines a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease 

or medical condition.” ’786 patent, col. 17, lines 49-51. 

The method (1) “provid[es] patient information to a computing device” having routine input, memory, look-up,

comparison, and output capabilities and that (2) “generat[es] . . . a ranked listing of available therapeutic 

treatment regimens” and (3) “generat[es] . . . advisory 

information for one or more therapeutic treatment regimens in said ranked listing.” Id. at col. 17, line 52, 

through col. 18, line 3. Claim 1 places only very broad 

limitations on a “computing device”: it must contain—like 

a doctor’s mind—a set of “expert rules for evaluating and 

selecting” from a stored “plurality of different therapeutic 

treatment regimens,” as well as “advisory information 

useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens.” Id. at col. 17, lines 54-64.

Like the processes claimed in Benson, the process of 

claim 1 “can be . . . performed without a computer” or, 
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB 9

alternatively, “can be carried out in existing computers 

long in use, no new machinery being necessary.” 409 U.S. 

at 67. The claim does not purport to identify new computer hardware: it assumes the availability of physical 

components for input, memory, look-up, comparison, and 

output. Nor does it purport to identify any steps beyond 

those which doctors routinely and consciously perform. 

Our ruling is limited to the circumstances presented here, 

in which every step is a familiar part of the conscious 

process that doctors can and do perform in their heads.

The Supreme Court’s post-CyberSource decision in 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 

S. Ct. 1289 (2012), reinforces the application of CyberSource to decide the present case. The Supreme Court in 

Mayo, though addressing a case involving the “law of 

nature” exclusion from section 101, recognized that “mental processes” and “abstract ideas” (whatever may be the 

precise definition and relation of those concepts) are 

excluded from section 101. See 132 S. Ct. at 1289, 1293, 

1297-98 (quotation marks omitted). Whatever the boundaries of the “abstract ideas” category, the claim at issue 

here involves a mental process excluded from section 101: 

the mental steps of comparing new and stored information and using rules to identify medical options. 

Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility

under section 101 requires that the claim involve 

“enough” else—applying the idea in the realm of tangible 

physical objects (for product claims) or physical actions 

(for process claims)—that is beyond “well-understood, 

routine, conventional activity.” 132 S. Ct. at 1294, 1298, 

1299. The claim here does not do so. It calls on a computer to do nothing that is even arguably an advance in 

physical implementations of routine mental informationcomparison and rule-application processes. In this context, the concern about preempting public use of certain 
10 SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB

kinds of knowledge, emphasized in Mayo, is a grave one. 

See id. at 1301-02. 

Our decisions since Mayo do not undermine CyberSource or its application here. None of those decisions 

calls for validation of a claim, like the present one, to 

familiar mental steps performed by or with a computer, 

without more of significance. 

Both the court’s decision in Bancorp, supra, and its 

decision in CLS Bank Int'l v. Alice Corp. Pty, 717 F.3d 

1269 (Fed. Cir. 2013) (en banc), cert. granted, 134 S. Ct. 

734 (2013), insofar as they involved process claims like 

the claim here at issue, invalidated certain claims—which 

involved use of a computer, not defined other than by its 

function, to perform familiar steps of creating, recording, 

and altering of certain intangible entities (contracts such 

as insurance policies or financial obligations). Accenture 

Global Servs., GmbH v. Guidewire Software, Inc., 728 

F.3d 1336 (Fed. Cir. 2013), is similar. Ultramercial, Inc. 

v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013), reversed an 

invalidation on a motion to dismiss, but the process 

claimed there was materially different from the one at 

issue here. Although the parties did not dispute the 

involvement of an “abstract idea”—getting a kind of 

confirmation that a viewer has watched advertising as a 

precondition to sending the viewer desired programming—the process at issue in Ultramercial did not involve 

“mere mental steps.” See 722 F.3d at 1349 n.2. And the

claims involved a recitation of specifics of computer networks beyond what the present case involves. See id. at 

1350. 

CONCLUSION

For these reasons, the judgment of the district court is 

affirmed.

AFFIRMED