In re: Board of Trustees of the Leland Stanford Junior University
PROST, LOURIE, REYNA
March 25, 2021
Brief Summary: PTAB decision of ineligibility under section 101 of second Stanford patent application affirmed (“patent ineligible abstract ideas in the form of mathematical concepts”, “executing a mathematical algorithm on a regular computer”).
Summary: Stanford appealed PTAB decision affirming the final rejection of the claims as being “drawing to abstract mathematical calculations and statistical modeling, and similar subject that is not patent eligible” (“patent ineligible abstract mathematical algorithms and mental processes”). The claims are to “computerized method for inferring haplotype phase in a collection of unrelated individuals”. Under step one of the Alice inquiry (US 2014), “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” and “two abstract mental processes” (“abstract ideas”, “inputting an initial haplotype phase” and “automatically replacing an imputed haplotype”). Stanford argued that “as in Enfish, the application of the steps in claim 1 results in improved computer functionality” (Enfish, FC 2016) and the claims are directed to “improvements to computer implemented fields are considered technological improvements” (McRO, FC 2016) (“claim 1 is devoid of any specific step that applies the information in a useful way, such that the claimed calculations are ‘integrated’ into a practical application”). Under Alice’s step two, “[t]he Board determined that the claim 1 steps of receiving, storing, and extracting data were well-known, routine, and conventional”, rejecting “Stanford’s argument that claim 1 does not unduly preempt use of an [‘a hidden Markov model…a statistical tool’], noting that ‘the absence of complete preemption does not demonstrate patent eligibility’” (Ariosa, FC 2015). The FC panel agreed with PTAB’s Alice step one analysis, explaining that the “Courts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101” and “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” (Parker, US 1978; Gottschalk, US 1972; In re Schrader, FC 1994; McRO; Athena, FC 2016 (“[A] claim for a new abstract idea is still an abstract idea.”)). It also agreed with the PTAB’s Alice step two analysis since, e.g., “the recited steps of receiving, extracting, and storing data amount to well known, routine, and conventional steps taken when executing a mathematical algorithm on a regular computer” and do “not transform an abstract idea into patent eligible subject matter” (In re Greenstein, FC 2019; SAP, FC 2018 (holding that an advance in financial mathematical techniques does not constitute an inventive concept)) (claims do not “require or result in a specialized computer or a computer with a specialized memory or processor”, novelty is not “the touchstone of patent eligibility”). The PTAB decision of ineligibility under section 101 was therefore affirmed.