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Patent-Eligibility Considerations & Prosecution Strategies for AI-Based Life Sciences Patent Applications

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This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial...

We are Morrison Foerster — a global firm of exceptional credentials. Our clients include some of the largest financial institutions, investment banks, and Fortune 100, technology, and life sciences companies. Our lawyers are committed to achieving innovative and business-minded results for our clients, while preserving the differences that make us stronger.Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Prior results do not guarantee a similar outcome.

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This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial intelligence is revolutionizing research, innovation, and patient care in the life sciences. Stay tuned for expert insights regarding the impact of AI on intellectual property, licensing, contracts, regulatory policy, enforcement, privacy, and venture markets in life sciences.Read the <a href="https://lifesciences.mofo.com/topics/patent-eligibility-considerations-prosecution-strategies-for-ai-based-life-sciences-patent-applications" target="_blank">full blog post</a>.

Patent-Eligibility Considerations & Prosecution Strategies for AI-Based Life Sciences Patent Applications

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Steve Sundberg is a Senior Patent Agent in the San Francisco Office. His practice is focused on patent prosecution, portfolio management, and IP due diligence for early-stage and established corporate clients in the life science, biopharmaceutical, medical device, clinical diagnostics, and clean tech industries. His patent prosecution experience includes work on optical detection and imaging technologies, microfluidic devices and systems, bioassay technologies, nucleic acid sequencing technologies, bioinformatics algorithms, and machine learning techniques (as applied to digital pathology and image analysis, analysis of nucleic acid sequencing data, genomics database mining, and protein structural modeling).Steve received his Bachelor’s degree in physics and Ph.D. in biophysics from the University of California, Berkeley. Prior to transitioning to intellectual property law in 2014, he worked as an R&D scientist, R&D manager, and technical consultant in the life science, pharmaceutical, and clinical diagnostics industries. He is an inventor on 39 issued U.S. patents.

Steve Sundberg

Sr Patent Agent

Anna Yuan’s practice focuses on patent prosecution, IP due diligence, post-grant proceedings, and IP litigation support. She has been recognized as one of the “Ones to Watch” in America by Best Lawyer and a Rising Star in Intellectual Property by Americas Women in Business Law. Anna is the co-founder and co-chair of the firm’s Life Sciences + AI patent practice. She leverages her experience in software development and product design gained as a product manager at Microsoft to build valuable patent portfolios covering highly complex technologies to maximize their commercial value. Anna’s practice spans a wide array of technologies, including artificial intelligence, autonomous driving, blockchain, robotics, electronic devices, data analytics, virtual reality, wireless communications, network security, medical devices, diagnostics, health care, and genomics. She has developed and managed clients’ core portfolios in the United States, China, Canada, Europe, Japan, Korea, Mexico, and Australia. Anna’s clients include emerging companies, multinational corporations, and universities.Anna received her J.D. from Harvard Law School. During law school, she served as an executive editor of the Harvard International Law Journal and co-founded the Harvard China Law Association. She was also active in clinical and pro bono programs such as the Cyberlaw Clinic based at the Harvard Berkman Center for Internet and Society, and the Harvard Mediation Program.She received her B.S. summa cum laude in computer engineering from Louisiana State University, with minors in computer science and mathematics. Prior to attending law school, Anna worked as a program manager at Microsoft in the Windows Division. At Microsoft, she led projects relating to software user interface design, software reliability, and software privacy compliance. She has also worked as a facilities engineer at Chevron and as a software developer at Halliburton.She is admitted to practice in California and is registered to practice before the United States Patent and Trademark Office. Anna is a fluent Chinese speaker and regularly counsels Chinese clients in Silicon Valley and abroad.

Anna Yuan

Of Counsel

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.In his role as chair of the firm's Inter Partes Review and Post Grant Practice and previously the firm's Patent Reexamination Group, he has overseen hundreds of post-grant proceedings. He not only initiates post-grant proceedings for petitioners but also defends patent owners in such proceedings, from filing to appeal. Mr. Arjomand also regularly provides strategic guidance for and management of post-grant proceedings co-pending with litigation.Representative completed post-grant matters include the following.<ul><li>PGR2017-00009 Successfully represented patent owner PhishMe in PGR. The USPTO denied the petition based on a PGR eligibility argument.</li></ul><ul><li>PGR2017-00001, IPR2017-00123 Defendant settled with petitioner Yuneec shortly after filing of petitions.</li></ul><ul><li>IPR2014-01266, -01313 Defended patent owner HML against two inter partes reviews by different parties, resulting in claim survival or petition denial. </li></ul><ul><li>IPR2013-00593, -00594, -00597, -00598  Represented petitioner Yamaha in a series of inter partes reviews in which all pending claims were found unpatentable in final written decisions by the USPTO.</li></ul><ul><li>IPR2013-00149 Shortly after inter partes reviews became available, filed and led this review for petitioner Wavelock Advanced Technology. All pending claims were subsequently cancelled by patent owner.</li></ul><ul><li>Reexamination Control No. 95/001,734 Prepared and led inter partes reexamination of patent asserted against Yahoo! All pending claims were cancelled.</li></ul><ul><li>Reexamination Control No. 95/001,381 Successfully defended patent owner through appeal. Federal Circuit issued a precedential decision,  805 F.3d 1350, in favor of Netlist.</li></ul><ul><li>Reexamination Control No. 95/000,293 Prepared and oversaw this inter partes reexamination of a patent asserted against EchoStar. All pending claims were cancelled or amended. The matter settled favorably for EchoStar.</li></ul><div>In addition to his practice relating to adversarial PTO proceedings, Mr. Arjomand regularly prosecutes patent applications. He concentrates his prosecution work on consumer electronics, semiconductor processing, and automotive technologies. Mr. Arjomand works closely with clients in these technology sectors to develop and manage their patent portfolios. Additionally, Mr. Arjomand lived in Japan in 2008, where he worked extensively with Japanese technology companies to develop their global patent portfolios.Mr. Arjomand received his B.S. in mechanical engineering from the University of California, Berkeley in 1991, where he graduated with high honors. He obtained his J.D. from Berkeley Law in 1995. Mr. Arjomand is admitted to practice in California and is registered to practice before the USPTO.</div>