Federal Circuit affirms US university’s patent invalidations
Fed Circuit rejects Stanford Uni’s ‘abstract’ genetics patent
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The Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision denying Stanford University a patent application for calculating parent genes.
The patent application—US number 13/486,982—covers a “computerized statistical methods for determining haplotype phase”.
Haplotype phase describes the methodology of determining from which parent a specific allele is inherited.
The court affirmed the PTAB’s decision that claims 1 and 22-43 of the university’s patent application are drawn to “ineligible subject matter”.
Only claim 1 of the application was discussed in the affirmation as, according to the Federal Circuit judges, the other claims were dependent on claim 1.
Claim 1 details: “A computerized method for inferring haplotype phase in a collection of unrelated individuals”.
Federal Circuit judgeJimmie Reyna, who wrote the court’s opinion, said: “We find no inventive concept that would warrant treating the use of the claimed algorithms and mathematical calculations as patent eligible subject matter. Further, 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.”
“Using a conventional computer to receive, extract, and store information does not transform an abstract idea into patent eligible subject matter.”
Stanford University first filed the application on June 1 2012. It described its haplotype phase method as “playing pivotal roles in population and medical genetic studies.”
The ‘Alice’ test
In defense of its patentability before the PTAB board, Stanford argued that haplotype phasing is a computer implemented field, and that under McRO, Inc v. Bandai, “improvements to computer implemented fields are considered technological improvements,” and therefore patentable.”
In response, the board invoked Alice Corp. v CLS Bank as grounds for determining patentability.
In applying the two-step test, the board concluded that claim 1 of the application is directed to an abstract idea, making it unpatentable under the Alice test.
The second step of the test determines whether the claim includes: “any limitations that establish an inventive concept that transforms the abstract idea into patent-eligible subject matter”. The judges found the steps outlined in claim 1 “well-known, routine and conventional” and therefore not patent-eligible.
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Leland Stanford University, PTAB, Federal Circuit, Alice Corp