N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________

SMARTGENE, INC., Plaintiff

- Appellee,

v.

ADVANCED BIOLOGICAL LABORATOR IES, 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 Be ryl A. Howell.

______________________
Decided: January 24, 2014

______________________
F REDERICK N. S AMUELS , Cahn & Samuels, LLP, of Washington, DC, argued for plaintiff

- appellee. With him on the brief was M AURICE U. C AHN

.
R OBERT R. S ACHS , Fenwick & West, LLP, of San Fra ncisco, California, argued for defendants

- appellants. With him on the brief were M ICHAEL J. S ACKSTEDER , D ANIEL R. B ROWNSTONE , and J EFFREY V. L ASKER

. Of counsel on theSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 2

brief was E DWARD W. G OLDSTEIN , Goldstein Law, P.L.L.C., of Houston, Texas.

______________________
Before L OURIE , D YK , and T ARANTO , Circuit Judges.
T ARANTO , Circuit Judge

. SmartGene, Inc. brought this action against Advanced Biological Laboratories, SA
, and ABL Patent Licensing Technologies, SARL (collectively, ABL ), seeking a declar atory judgment that it did not infringe two of ABL’s p atent s , U.S. Patent No s . 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.
B ACKGROUND Each of the two patents he re is entitled “ Systems, Methods and Computer Program Products for Guiding the Selection of Therapeutic Treatment Regi mens. ” In each, t he key claims are independent C laims 1, 23, and 45, which de scribe a method, a system, and a computer program, respectiv ely, for guiding the selection of a treatment regimen for a patient with a known disease or medical condition

. C laim 1 of the ’786 patent reads: 1. A method for guiding the selection of a ther apeutic treatment regimen for a patient with a known disease o r medical condition, said method comprising: (a) providing patient information to a computing device comprising: a first knowledge base comprising a pl urality of different therapeutic treatmentSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 3

regimens for said disease or medical co ndition;

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 advis ory information useful for the treatment of a patient w ith different constituents of said different therapeutic treatment reg imens; and (b) generating in said computing device a ranked listing of available therapeutic treatment reg imens for said patient; and (c) generating in said computing device advisory inf ormation for one or more therapeutic treatment regimens in said ranked listing based on said p atient 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, l ine 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 “c omputer 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 precis e 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 protectionSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 4

under section 101. ABL counterclaimed, asserting i nfringement of C laims 1 and 23 of both patents. To esta blish 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 infring ement action , filed in the Eastern District of Texas, had been dismissed for lack of persona l jurisdiction before SmartGene initiated this declaratory

- judgment action

. The present case was stayed until Sep tember 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 pr esented during the reexamination s

. 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 assert ing that “for the pur pose of the § 101 analysis, claim 1 of the ’786 patent is repr esentative of all of t he claims of the patent s- in

- suit ,” SmartGene’s motion limited its elaboration of its arg uments for ineligibility to that claim

. J.A. 381

. In its responsive briefing opposing summary judgment, ABL never contested SmartGene’s characteri zation of c laim 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 . A t the oral argument on the summary

- judgment motion , ABL did arg ue that “system” claims require a different anal ysis from “method” claims

. See J.A. 2789

- 91 (“[F]or a system claim, there is a little bit different analysis b ecause claiming an actual system .

. . makes i t even less abstract because it’ s not just a method

. . . it is even moreSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 5

intimately connected to the computer, as it is the sy stem.”).
B ased on the failure of ABL’s briefing to contest SmartGene’s characteriza tion of c laim 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 immat erial with respect to whether the patents constitute eligible subject matter under 35 U.S.C. § 101 ” and, there fore, analyzed only c laim 1 of the ’786 patent. SmartGene, Inc.
, 852 F. Supp. 2d at 45

- 46

. T he 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 asser ted claims, “invalid” under section 101. Id. at 66.
ABL moved for reconsideration. The court denied the motion. It agai n 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).
D ISCUSSION 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).SMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 6

A ABL contends that, even if claim 1 of the ’786 patent is invalid , the district court erred in invali dating 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 c laims 1 a nd 23 of both —were ineligible under s ection 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 limit ation, were ineligible for patent protection

. See J.A. 60

- 61

. Although ABL co unter claimed for infringe ment of only

c laims 1 and 23 of each patent, SmartGene never na rrowed the scope of its declaratory

- judgment claims

. When later moving for summary judgment, Smart Gene expres sly placed all claims at issue, asserting that “the patent sin

- suit are facially invalid as directed to non

- statutory subject matter under 35 U.S.C. § 101.” J.A. 366 (emph asis added) ; see also J.A. 374 (arguing in briefing accomp anying the sum mary

- judgment motion that “all of the claims of the patents

- in

- suit ar e invalid” ). T hus, t he 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 s ection 101 presented a case or controversy. ABL never argued that the district court lacked jurisdic tion over any of SmartGene’s claims. And ABL had sued SmartGene in an earlier action, in Texas, alleging i nfringement of both patent s without limitation t o partic ular claims. Given that complaint, w e see no reason forSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 7

concluding that SmartGene failed to meet it s “ burden of establishing the existence of an actual case or controve rsy ” 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
exp ressly asserted that claim 1 was representative and that any differences between the claims are immate rial under s ection 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). D uring the
summary

- judg ment 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 pa ssing 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 forfeit ed any argument that any paten t claims here are to be treated differently from claim 1 of the ’786 patent.
B The district court correctly held that the c laim 1 method falls outside the eligibility standards of s ection 101 as that provision has been construed. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc.
, where, based on earlier pr ecedents, this court held that

s ection 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 performSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 8

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 cat egory of “abstract ideas”

— nor processes that merely invoke a computer and its basic functionality for implement ing 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 fun ctionality 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 therape utic treatment regimen for a patient with a known disease or medical condition .” ’786 patent, col. 17, lines 49

- 51. T he method (1) “provid[es] patient information to a co mputing device” havi ng routine input, memory , look

- up, comparison , and output capabilities and that (2) “ ge nerat [es] .

. . a ranked listing of available therapeutic treatment regimens ” and (3) “generat[es] .

. . advisory i nformation for one or more therapeutic treatment reg im ens 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 regimen s,” as well as “ advisory information useful for the treatment of a patient with different co nstituents of said different therapeutic treatment reg imens .” Id . at col. 17, lines 54

- 64. Like the processes c laimed in Benson
, the process of

c laim 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 n ew machinery being necessary.” 409 U.S. at 67. The claim does not purport to identify new co mputer 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 doctor s 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. 1 289 (2012)
, reinforces the application of Cybe rSource 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 “me ntal processes ” and “abstract ideas” (whatev er may be the precise definition and relation of those concepts) are excluded from s ection 101. See 132 S. Ct. at 1289, 1293, 1297

- 98 (quotation marks omitted)

. Whatever the boun daries of the “abstract ideas” category, t he claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored info rmation and using rules to identify medical options. Mayo demanded that, when a claim involves an a bstract idea (or, in Mayo itself, a law of nature), eligibil ity under s ection 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.” 13 2 S. Ct. at 1294, 1298, 1299

. The claim here does not do so. It calls on a co mputer to do nothing that is even arguably an advance in physical implementations of routine mental information

comparison and rule

- application processes. In this co ntext, the concern about preempting public use of certainSMARTGENE , INC

. v. ADVANCED BIOLOGICAL LAB 10

kinds of knowledge, emphasized in Mayo , is a grave one. See id. at 1301

- 02.
Our decisions since Mayo do not undermine Cybe rSource 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 ba nc)
, cert. granted , 134 S. Ct. 734 (2013)
, insofar as they involve d 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, rec ording, and altering of certain intangible entities (contracts such as insurance policies or financial obliga tions)

. A ccenture 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 motio n to dismiss, but the process claimed there w as materially different from the one at issue here. Although the parties did not dispute the involvement of an “abstract idea”

— getting a kind o f confirmation that a viewer has watched advertising as a precondition to sending the viewer desired progra mming

— 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 s pecifics of computer ne tworks beyond what the present case involves. See id. at 1350.
C ONCLUSION For these reasons, the judgment of the district court is affirmed.

AFFIRMED