Patent Claims For Retrieval of Data from Medical Database Held Not Patent-Eligible

Patent claims directed to a medical database did not meet patent-eligibility requirements of 35 U.S.C. § 101. Therefore, the court in Cogent Med., Inc. v. Elsevier Inc., Nos. C-13-4479-RMW; C-13-4483-RMW; C-13-4486-RMW (N.D. Cal. Sept. 30, 2014), granted a motion to dismiss the plaintiffs complaint for patent infringement for failing to state a claim under FRCP 12(b)(6).

The court quoted from the Detailed Description of the patent-in-suit, U.S. Patent No. 7,133,879, for a summary of the “alleged invention:”

The invention provides access to one or more databases to a user. The user can select areas of interest and store searches to be performed on the databases. Additionally, the user can access data selections made by an entity other than the user. For example, the user can request data selections regarding a specified topic made by an expert in that topic. The user can request data selections made by an advertiser.

Further, claim 1 was “representative of the other claims,” and recited “a method for providing data to a user from one or more data sets.”

Before considering the patent-eligibility of the claims, the court considered the patent owner’s argument that claim construction was necessary before the question of patentable subject matter could be addressed. Acknowledging that sometimes claim construction is a prerequisite to determining patent-eligibility, in this case, the court, with scarce explanation, found that claim construction was not necessary.

The court then found “that the ’879 Patent claims the abstract idea of maintaining and searching a library of information.” The court explained that

Given a database of information, the alleged invention catalogues the information and sets aside particular information that may be especially relevant based on the particular user. This idea is little different than the basic concept of organizing a physical library so that an individual can search for information by going to the relevant portion of the library and picking a book.

Further, the patent claims did not recite “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” The patent owner argued that an “enhanced interface” was such an inventive feature. However, even if the enhanced interface provided features not previously implemented in software, “the court need only consider the resourcefulness of the human mind in manually pre-selecting medical information that is not literally within the search terms supplied by the user.” That is, “the ’879 Patent claims no more than a computer automation of what ‘can be performed in the human mind or by using a pen and paper.’”

The patent owner also argued that the patent claims “do not preempt use of the abstract idea because they are expressly limited to the medical field.” The court dismissed this argument, explaining that “a bare field of use limitation, without more, cannot make an otherwise abstract claim patent-eligible.” Further, “restricting the abstract idea to a particular field is not an inventive application of an abstract idea.”

Finally, the court considered the machine-or-transformation test. In this case, “the transformation prong is inapplicable in that the claimed methods are not tied to any particular machine.” The recited method steps assumed, but did not explicitly recite, a computer. To the extent the claims included a computer, “it is a general-purpose computer,” which was insufficient to confer patent-eligibility.