IP Law Daily, PATENT—N.D. Ohio: Computerized system for selection of prescription drug plans unpatentable as abstract idea, (Sep 29, 2022)

By Kevin M. Finson, J.D.

A patent claiming a system for assisting employers and government agencies in selecting prescription drug benefit plans was invalid because it merely implemented longstanding business practices using generic computer components.

A consultant's system for assisting in the selection of prescription drug benefits plans was unpatentable as an abstract idea, the federal district court in Cleveland has held. The claimed system consisted merely of longstanding business activities performed on generic computer components (Truveris, Inc. v. SkySail Concepts, LLC, September 28, 2022, Brennan, B.).

Truveris, Inc., owned U.S. Patent No. 10,817,920 (the '920 patent), which claimed a computerized system used by consulting firms to assist employers and government agencies in selecting prescription drug benefits plans. Truveris filed suit against SkySail Concepts, LLC (SkySail), alleging that SkySail infringed through its submission of a winning bid to manage an electronic reverse auction for the State of New Hampshire to select a prescription drug benefits provider. SkySail moved to dismiss on the ground that the patent was invalid for being directed at an abstract idea. The court applied the two-step Alice test.

Abstract idea. The problem the patent claimed to solve was one of comparing different bids and proposals from different vendors, which the court held was quintessentially a business or economic problem. The process of managing such bids was a basic building block of economic activity. If this process were patentable, the court noted, the entire industry would be preempted from using computers to conduct fundamental business practices. On step one of the Alice test the court concluded that this was clearly an abstract idea.

Inventive concept. On step two of the Alice analysis, the court undertook a close review of each of the fifteen steps described in claim 1 for producing a request for proposals, reviewing the client's history of prescription drug benefit program use, submitting the request for proposals to various pharmacy benefit managers, and reviewing their respective proposals. No single step in isolation, and no set of ordered steps, contained anything but long existing business practices simply carried out by generic computer. There were no improvements to computer technology, and the claim language was vague about how the system described could actually be implemented. The court held that there was no inventive concept shown and that the patent claim at issue was therefore invalid.

The court also noted that claims for induced and contributory infringement mentioned in the complaint were not set out as separate counts or supported by any factual allegations and dismissed the case.

The case is No. 1:21-cv-01262-BMB.

Attorneys: Andrew W. Alexander (Calfee, Halter & Griswold, LLP) for Truveris, Inc. Andrew D. Skale (Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C.) for SkySail Concepts, LLC d/b/a SkySail Rx, LLC.

Companies: Truveris, Inc.; SkySail Concepts, LLC d/b/a SkySail Rx, LLC

Cases: Patent OhioNews