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Federal Circuit

Affirms PTAB decision

On software patent

מאת King of Hearts / Wikimedia Commons / CC-BY-SA-3.0, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=22750289

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB) that the claims of a patent application owned by Stanford University “are drawn to abstract mathematical calculations and statistical modeling, and similar subject matter,” and thus are patent-ineligible subject matter under 35 U.S.C. § 101.

Stanford filed its patent application in 2012 for “methods and computing systems for determining haplotype phase.”

As the Federal Circuit noted,

Haplotype phasing is a process for determining the parent from whom alleles—i.e., versions of a gene—are inherited. A haplotype phase acts as an indication of the parent from whom a gene has been inherited.

According to the patent application, improved haplotype phasing techniques “promise to revolutionize personalized health care by tailoring risk modification, medications, and health surveillance to patients’ individual genetic backgrounds.”

Achieving these goals is difficult because it requires “interpretation of massive amounts of genetic data produced with each genome sequence.”

The method described in the patent application

purports to meet that challenge via a method for receiving certain types of genetic data and processing the data by performing mathematical calculations and statistical modeling to arrive at a haplotype phase determination.

As the court notes

The claimed methods first involve using two types of information, namely genotype data, and pedigree data, to determine alleles’ inheritance state using a method published in the prior art…

However, in the prior art, “methods of determining haplotype phase based on inheritance state yielded an incomplete number of the alleles’ haplotypes.”

The increase in haplotype phase predictions, according to the application, is made possible by factoring additional data into the analysis. This enables the “haplotype phase to be inferred in regions where inheritance state is uninformative.”

The PTAB rejected certain claims of the patent “as covering patent-ineligible abstract mathematical algorithms and mental processes.”

As the court noted, the PTAB applied the two-step framework establish by the US Supreme Court in the Alice decision:

Addressing step one of the Alice inquiry, the Board determined that the eight steps in claim 1 are directed to either the “mental steps of receiving, storing, or providing information” or “mathematical concepts.” … The Board reasoned that the claim recites steps for receiving and analyzing information, which humans could process in their minds, or by mathematical algorithms, which are mental processes within the abstract-idea category.

Turning to step two of the Alice inquiry, the Board concluded that the claims did not include additional limitations that, when taken individually or as a whole, provide an inventive concept that transforms the abstract idea into patent-eligible subject matter. The Board found that the steps of receiving data, performing calculations using that data, storing the results, and providing the results upon request using a computer did not go beyond the well-known, routine, and conventional.

The Federal Circuit agreed with the PTAB, noting that

A patent-eligible claim must do more than simply recite the abstract idea “while adding the words ‘apply it.'”

Notably, found the court, claim 1 of the patent application “neither requires nor results in, a specialized computer or a computer with a specialized memory or processor.”

The court cited In re TLI Commc’ns LLC Pat. Litig.,  (holding generic computer components insufficient to add an inventive concept to an otherwise abstract idea).

The court concluded that

The alleged innovation accomplished in claim 1 is in the mathematical analysis itself, namely, in the receipt of data, executing mathematical calculations, and storing the resulting data. The alleged innovation, therefore, subsists in “the basic tools of scientific and technological work.”

This decision joins several others in which inventions for technology that includes software have been found patent-ineligible. Commentators have suggested that the courts’ seeming distaste for inventions enabled by software is making US industries less competitive by making it difficult for them to obtain patent protection for such inventions.

Stanford is expected to appeal the decision to the Supreme Court.  A petition for a writ of certiorari on a similar question of patent eligibility in the biotech industry is currently before the Supreme Court in the case of Ariosa Diagnostics, Inc. v. Illumina, Inc.

The case is In re Bd. of Trs. of the Leland Stanford Junior Univ.


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