Second In Re Stanford decision this month, same subject
RICK NEIFELD
On 3/11/2021, the Federal Circuit issued a decision in docket number 2020-1012 regarding application 13/445,925.
On 3/25/2021, the Federal Circuit issued a related decision in docket number 2020-1288 regarding application 13/486,982.
The 3/25/2021 decision notes that these two appeals were consolidated for purpose of oral argument and that both applications “involve statistical methods of predicting haplotype phase.”
It seems to me that both decisions relied upon the conclusion that a novel algorithm that provides improved data, and no more, is not patent eligible. Anyone have further thoughts on these two cases?
My brief summaries appear below.
In re Board of Trustees of the Leland Stanford Junior University, 2020-1012 (Fed. Cir. 3/11/2012).
This is a decision on an appeal from PTAB case 13/445,925. The PTAB held the claims to be directed to patent ineligible subject matter. Stanford appealed. The Federal Circuit affirmed.
Legal issue: 35 USC 101, eligibility, novel abstract idea resulting in improved data.
The Federal Circuit restated that a novel abstract idea is not patent eligible subject matter.
Stanford argues that claim 1 is not directed to an abstract idea because the specific application of the steps is novel and enables scientists to ascertain more haplotype information than was previously possible. See, e.g., Appellant’s Br. 5 (“While the ‘trio’ method may be able to provide long-range haplotype phasing for approximately 80% of heterozygous positions, the method of the present invention provides accurate, long-range phasing at 97.9% of all heterozygous positions.” (citing the ’925 application at ¶¶ 91–92)). Even accepting the argument that the claimed process results in improved data, we are not persuaded that claim 1 is not directed to an abstract mathematical calculation. 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.”); SAP, 898 F.3d at 1170 (“[P]atent law does not protect such claims, without more, no matter how groundbreaking the advance.”). [In re Board of Trustees of the Leland Stanford Junior University, 2020-1012 (Fed. Cir. 3/11/2012).]
In re Board of Trustees of the Leland Stanford Junior University, 2020 1288 (Fed. Cir. 3/25/2021).
This is a decision on an appeal by Stanford in PTAB case 13/486,982. The PTAB held the claims to be directed to patent ineligible subject matter. Stanford appealed. The Federal Circuit affirmed.
Legal issue: 35 USC 101, patent eligible subject matter, algorithm providing improved accuracy of prediction.
The Federal Circuit concluded that a predictive algorithm providing improved accuracy of a mathematically calculated statistical prediction did not qualify as patent eligible subject matter.
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. *** The different use of a mathematical calculation, even one that yields different or better results, does not render patent eligible subject matter. [In re Board of Trustees of the Leland Stanford Junior University, 2020-1288 (Fed. Cir. 3/25/2021).]
Best regards, RICK
Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law
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