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IP Alert Update: Ariosa En Banc Denial

December 2, 2015

UPDATE: Today, the U.S. Court of Appeals for the Federal Circuit denied en banc review of the panel decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., a decision issued earlier this year. This case has generated substantial interest in the patent community, particularly among manufacturers of diagnostic tests. Briefing on the question of whether the court should take the case en banc generated 12 amicus briefs. The panel had concluded that Sequenom’s patent on a fetal genetic test was invalid as a “law of nature” under the U.S. Supreme Court’s guidance in Mayo Collaborative Services v. Prometheus Laboratories, Inc. and Association for Molecular Pathology v. Myriad Genetics, Inc., and under today’s order, the panel decision remains intact.

There were two concurring opinions and one dissenting opinion. First, Judges Lourie and Moore concurred in the denial of rehearing because they concluded that the Mayo decision compelled the result reached by the panel, even though, in their view, “it is unsound to have a rule that takes inventions of this nature out of the realm of patent-eligibility on grounds that they only claim a natural phenomenon plus conventional steps, or that they claim abstract concepts.”

Second, Judge Dyk likewise concluded that the Mayo decision compelled the result reached by the panel, but stated that the decision “leads me to think that some further illumination as to the scope of Mayo would be beneficial in one limited aspect.” He went on to state that “there is a problem with Mayo insofar as it concludes that inventive concept cannot come from discovering something new in nature—e.g., identification of a previously unknown natural relationship or property.” He then set forth his proposed approach for analyzing claims under section 101, in which he would limit the scope of patents to “narrow claims,” and only then for “applications actually reduced to practice,” as opposed to constructively reduce to practice. He concluded, though, that even under his proposed approach the Sequenom patent was still likely invalid.

Finally, Judge Newman dissented, concluding that the Mayo and Myriad Supreme Court cases did not compel the result of the panel decision. She observed that “patenting of this new diagnostic method [does not] preempt further study of this science, nor did the development of additional applications. Patenting does, however, facilitate the benefit of provision of this method through medical diagnostic commerce, rather than remaining a laboratory curiosity.”

The concurring opinion of Judges Lourie and Moore and the dissenting opinion of Judge Newman seemed to invite Supreme Court review of this case. Fitch Even attorneys will monitor for any action by the Court and will report in a future alert.

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