Friday, March 26, 2021

Stanford University loses at CAFC on 101 issue

The outcome:

The Board of Trustees of the Leland Stanford Junior University appeals the final rejection of patent claims in its patent application. The patent examiner reviewing the application rejected the claims on the grounds that they involve patent ineligible subject matter. On review, the Patent Trial and Appeal Board affirmed the examiner’s final rejection of the claims. As discussed below, the rejected claims are drawn to abstract mathematical calculations and statistical modeling, and similar subject matter that is not patent eligible. Accordingly, we affirm the decision of the Patent Trial and Appeal Board.

The subject matter:

The Board of Trustees of the Leland Stanford Junior University (“Stanford”) filed its Application No. 13/486,982 (“’982 application”) on June 1, 2012. J.A. 39.1 The ’982 application is directed to computerized statistical methods for determining haplotype phase. A haplotype phase acts as an indication of the parent from whom a gene has been inherited. Haplotype phasing is a process for determining the parent from whom alleles—i.e., versions of a gene—are inherited.

The analysis by PTAB:

In its analysis of the examiner’s rejections, the Board applied the two-step framework established by the Supreme Court for determining patent eligibility. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014); J.A. 9–20. Addressing step one of the Alice inquiry, the Board determined that representative claim 1 is directed to patent ineligible abstract ideas in the form of mathematical concepts, i.e., mathematical relationship, formulas, equations, and calculations. J.A. 10–11. Specifically, the Board explained, claim 1 recites an initial step of receiving genotype data, followed by the mathematical operations of building a data structure describing an HMM and randomly modifying at least one imputed haplotype to automatically recompute the HMM’s parameters. Id. The Board also determined that claim 1 recites two abstract mental processes. J.A. 11. First, claim 1 recites the step of “imputing an initial haplotype phase for each individual in the plurality of individuals based on a statistical model,” which, according to the Board, does not require a computer implementation. See id. Second, claim 1 recites the step of automatically replacing an imputed haplotype phase with a randomly modified haplotype phase when the latter is more likely correct than the former. See J.A. 11– 12. The Board thus concluded that claim 1 recites abstract ideas.

The CAFC noted:

We conclude, at Alice step one, that the reviewed claims of the ’982 application are directed to patent ineligible abstract ideas. Specifically, the claims are directed to the use of mathematical calculations and statistical modeling. Courts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101. See, e.g., Parker v. Flook, 437 U.S. 584, 595 (1978) (“[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” (internal citation omitted)); Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (finding claims patent ineligible because they “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself”); In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994) (a data gathering step of entering bids was “insufficient to impart patentability to a claim involving the solving of a mathematical algorithm”).
(...) Stanford separately suggests that another claimed advance is that the claim steps result in more accurate haplotype predictions. See, e.g., Appellant’s Br. 21–22, 29–34, 43, 46. Specifically, Stanford argues that the alleged increase in haplotype prediction accuracy renders claim 1 a practical application rather than an abstract idea. See id. at 30. Stanford’s cited cases do not support its argument because the cases involve practical, technological improvements extending beyond improving the accuracy of a mathematically calculated statistical prediction. See, e.g., McRO, 837 F.3d at 1315 (“The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.”); Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018) (finding patent eligible a claim drawn to a behavior-based virus scan that protects against viruses that have been “cosmetically modified to avoid detection by code-matching virus scans”); Enfish, 822 F.3d at 1330, 1333 (discussing patent eligible claims directed to “an innovative logical model for a computer database” that included a self-referential table allowing for greater flexibility in configuring databases, faster searching, and more effective storage); CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1368 (Fed. Cir. 2020) (explaining that the claims at issue focus on a specific means for improving cardiac monitoring technology; they are not “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery” (quoting McRO, 837 F.3d at 1314)). Unlike the technological improvements made in those cases, the improvement in computational accuracy alleged here does not qualify as an improvement to a technological process; rather, it is merely an enhancement to the abstract mathematical calculation of haplotype phase itself. See Athena, 915 F.3d at 750; Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”). The different use of a mathematical calculation, even one that yields different or better results, does not render patent eligible subject matter. Because we conclude that claim 1 is directed to patent ineligible subject matter, we next turn to step two of the Alice inquiry. At step two, we inquire whether any limitations establish an inventive concept that transforms the abstract idea into patent eligible subject matter. Alice, 573 U.S. at 217– 18. Step two is like a lifeline: it can rescue and save a claim that has been deemed, at step one, directed to non-statutory subject matter. We conclude that claim 1 is not saved.


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