Federal Circuit Affirms PTAB’s Rejection Of Claims Directed To More Accurate Genetic Data Interpretation As Patent Ineligible
On March 25, 2021, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a ruling of the Patent Trial and Appeal Board (“PTAB”) finding patent claims directed to methods of interpreting genetic data to be patent ineligible. In re Bd. of Trs. of the Leland Stanford Junior Univ., --- F.3d --- (Fed. Cir. Mar. 25, 2021). The CAFC found that the rejected claims are drawn to patent-ineligible abstract mathematical calculations and statistical modeling, and that the claim limitations do not establish an inventive concept sufficient to transform such subject matter into patentable subject matter.
On June 1, 2012, the Board of Trustees of the Leland Stanford Junior University (“Applicant”) filed Application No. 13/486,982 (the “’982 Application”) directed to computerized methods for determining haplotype phase, which gives an indication of the parent from whom a gene is inherited. The application describes a “PHASE-EM” statistical model that purportedly improves accuracy over existing methods using a hidden Markov model, a statistical tool used in numerous fields to make probabilistic determinations of unobservable variables. The examiner finally rejected the ’982 Application as claiming patent ineligible mathematical algorithms and mental processes. Applicant appealed to the PTAB, which affirmed.
Under Alice Step One, the PTAB agreed with the examiner that representative claim 1 of the ’982 Application was directed to patent ineligible mathematical concepts and mental processes. Unlike claims previously found patentable, which apply mathematical calculations to create “synchronized, animated characters,” the calculations claimed in representative claim 1 are not integrated into a practical application.
Under Alice Step Two, the PTAB found that the additional limitations of representative claim 1 do not provide an inventive concept. The PTAB found that the claimed computational steps do not establish patentability, noting that “a significant discovery in the field of haplotype prediction” alone is insufficient to establish patent eligibility.
Applicant further appealed, and the CAFC affirmed.
Under Alice step one, the CAFC rejected Applicant’s argument that an increase in haplotype prediction accuracy is a practical application, not an abstract idea. Comparing representative claim 1 to the claims found patentable in the McRO, Finjan, Enfish, and CardioNet cases, the CAFC found that the purported improvement in computational accuracy was not an improvement to a technological process, but “merely an enhancement to the abstract mathematical calculation[.]” The different use of a mathematical calculation does not make such use patentable, even if it yields different or better results.
Under Alice step two, the CAFC also rejected Applicant’s argument that the PTAB failed to consider all elements of representative claim 1 as an ordered combination, finding that the PTAB correctly determined that the claim “simply appends the abstract calculations to the well-understood, routine, and conventional steps” of receiving data, storing it, and extracting a result. The CAFC further noted that novelty is not the touchstone of patent eligibility. Even if a specific combination of mathematical steps yields more accurate results than previously achievable, such result is not enough to transform an abstract idea into patentable subject matter.