January 19, 2021

Volume XI, Number 19


January 18, 2021

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Sovereign Plaintiff Not Immune From Infringement Defenses

Affirming dismissal of a patent infringement lawsuit on § 101 eligibility grounds, the US Court of Appeals for the Federal Circuit found that a patent holder bringing an infringement action waives sovereign immunity against all defenses, including subject-matter eligibility. University of Florida Research Foundation, Inc. v. General Electric Co., Case No. 18-1284 (Fed. Cir. Feb. 26, 2019) (Moore, J).

The University of Florida Research Foundation (UFRF) sued several General Electric (GE) entities for infringement of a patent claiming a method and system for “integrat[ing] physiologic data from at least one bedside machine.” The representative claim recited the steps of (1) receiving data, (2) converting the data from one format to another, (3) “performing at least one programmatic action” on the converted data, and (4) “presenting results . . . upon a graphical user interface.” GE moved to dismiss, arguing that the patent claimed ineligible subject matter under 35 USC § 101. After the district court granted GE’s motion, UFRF appealed.

On appeal, UFRF argued that the district court did not have subject matter jurisdiction to hear GE’s eligibility challenge and that the ineligibility determination was incorrect on the merits.

Addressing the jurisdictional challenge, the Federal Circuit explained that UFRF’s filing of the infringement suit waived sovereign immunity against any defenses to infringement, including subject-matter eligibility. Turning to the merits, the Court found that at Alice step one, the claim was directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data.” At Alice step two, the Court concluded that the claim did no “more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Accordingly, the Court affirmed that the claims were patent ineligible.

Practice Note: Sovereign patent holders must accept the risk of patent invalidation on any ground that comes with filing an infringement suit.

© 2020 McDermott Will & EmeryNational Law Review, Volume IX, Number 87



About this Author


David Mlaver* is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C. office.  He focuses his practice on intellectual property litigation matters.

David received his J.D., cum laude, from the Georgetown University Law Center, where he was a senior editor of The Tax Lawyer.  He earned his A.B. in chemistry and B.S. in biology, with high distinction, from Duke University. David is admitted to practice in Maryland.

*Not admitted to practice in the District of Columbia...

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