Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

University of Florida Research Foundation, Inc. v. General Electric Company, Appeal No. 2018-1284 (Fed. Cir. Feb. 26, 2019)

The Court this week affirmed the Rule 12(b)(6) dismissal of an infringement lawsuit, finding that the claims of the asserted patent were directed to patent-ineligible subject matter under 35 U.S.C. § 101. The Court also considered the extent of sovereign immunity for state universities in patent infringement cases.

The plaintiff, University of Florida Research Foundation‎ (UFRF), had argued that the district court lacked subject matter jurisdiction over the case because it is immune as an arm of the State of Florida. The Court found that the district court did not lack subject matter jurisdiction to resolve the § 101 challenge. The Court recited that a state waives its sovereign immunity and consents to jurisdiction when appearing voluntarily in federal court, a waiver that extends not only to the cause of action but also “to any relevant defenses and counterclaims.” UFRF argued that GE’s § 101 challenge was not a “defense” to its infringement cause of action, relying on the Supreme Court’s decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017), in which SCOTUS found that laches was not an available defense within the six-year statute of limitations. The Federal Circuit rejected UFRF’s argument, relying on its own pre-SCA precedent finding that the “defenses” enumerated under 35 U.S.C. § 282(b)—which include “[i]nvalidity … on any ground specified in part II [of Title 35] as a condition for patentability”—include challenges under § 101. The Court distinguished SCA on the ground that while recognizing laches as a defense may conflict with the statutory limitations period, treating a § 101 eligibility challenge as a defense poses no such conflict with § 282. As such, UFRF’s sovereign immunity was waived with respect to the § 101 challenge when it consented to jurisdiction over its infringement claims.

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Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Jason Wrubleski