September 27, 2021

Volume XI, Number 270

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September 24, 2021

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CAFC Affirms PTAB’s Rejection of Patent Application as Abstract

In In re Bd. of Trs. of the Leland Stanford Junior Univ., No. 2020-1012 (Fed. Cir. Mar. 11, 2021), the Federal Circuit affirmed the PTAB’s rejection of a patent application under 35 U.S.C. § 101, holding that it claimed a patent-ineligible mental process combined with mathematical algorithms.

The application claims a method for resolving haplotype phase for determining the parents from which genes are inherited. The USPTO rejected the claims, finding that the recited steps of “receiving” data and “determining,” “storing,” and “providing” information constituted a mental process that could be performed within the human mind, together with mathematical algorithms. The first claim also recited a “computer system comprising a processor and a memory” in each step of the method. The USPTO noted that the claims recited only generic computer components insufficient to make the claims patent eligible. On appeal, the PTAB affirmed.

The Federal Circuit affirmed, stating the claims were merely a mathematical algorithm and did not provide a concrete application for the haplotype data. The Federal Circuit noted the absence of a specialized computer or components and held that an improvement in the process of resolving haplotype phase does not “transform[] the claims into a patent eligible application.”

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 78
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About this Author

Christina Ji-Hye Yang Patent Litigation Attorney Finnegan Law Firm Washington, DC
Associate

Christina Ji-Hye Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Christina is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission (ITC) and post-grant proceedings at the Patent Trials and Appeals Board (PTAB), including inter partes reviews (IPRs). Christina has also advised clients in...

202-408-4465
Esther H. Lim Patent Litigation Attorney Finnegan Law Firm Washington, DC
Partner

Esther Lim has twenty-five years of experience in patent litigation, portfolio management, licensing, and counseling. She has litigated extensively before federal district courts, the International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit (CAFC) in complex matters involving a wide range of technologies from electrical to mechanical to pharmaceutical. Esther served as the founding managing partner of Finnegan’s Shanghai office. She is the past president of the D.C. Bar with 110,000 members.

Over two decades of diverse professional endeavors and...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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