In Re: Board of Trustees of the Leland Stanford Junior University, Appeal No. 2020-1288 (Fed. Cir. Mar. 25, 2021)

The Federal Circuit issued only one precedential decision this week—a companion case from a decision we wrote about two weeks ago concerning ineligible subject matter. In that prior case, the Court affirmed the Board’s conclusion that claims drawn to statistical methods of predicting haplotype phase are directed to patent ineligible subject matter. Our write-up of that decision can be found here.

This week’s case concerned a parallel application that was also rejected by the PTAB concerning the same subject matter. Again, the Court concluded that the claimed invention is directed to a patent ineligible mathematical algorithm. The Court did not consider Stanford's argument that one claimed advance leads to computational efficiency in computing haplotype phase on the grounds that this argument was forfeited by not being first raised before the Board. Regarding Stanford’s argument that the claimed steps result in more accurate haplotype predictions, mirroring its rationale in the other case that a novel mathematical algorithm is still a mathematical algorithm, here the Court pointed out that a more efficient mathematical algorithm is still a mathematical algorithm. As to Stanford’s argument that the Board failed to consider the elements of claim 1 as an ordered combination, the Court agreed with the Board that claim 1 simply appends the abstract calculations to the well-understood, routine, and conventional steps of receiving and storing data in a computer memory and extracting a predicted haplotype. For these reasons, the Court affirmed the Board’s conclusion that the claims are drawn to patent ineligible subject matter.

A copy of the opinion can be found here.

By Michael A. Cofield