EVW Partner Files Supreme Court Brief In Sequenom IP Case

Eaton & Van Winkle Partner Co-Authors Supreme Court Brief on Patent Issue of Vital Importance to IP Owners in Life Sciences and Many Other Fields

Eaton & Van Winkle is proud that our partner Dr. Charles Miller is a co-author of the New York Intellectual Property Law Association’s (NYIPLA) amicus curiae brief, which was filed today in the United States Supreme Court in support of Sequenom, Inc.’s petition for a writ of certiorari.

The Court of Appeals for the Federal Circuit (CAFC) held invalid Sequenom’s claimed process for prenatal diagnosis of certain genetic fetal conditions, despite the court’s agreement that the claimed invention “utilized man-made tools of biotechnology in a new way that revolutionized prenatal care” and the concurring opinion’s view that the claimed invention was a “groundbreaking” “paradigm shift” in prenatal care and “should be patent eligible.”

The CAFC panel found under the Supreme Court’s 2012 Mayo decision (132 S. Ct. 1289) that the patent claims at issue were “directed to detecting the presence of a naturally occurring thing” and therefore fell within the judicially-recognized “natural phenomenon” exception to patentability under “step 1” of the Mayo analysis.  Proceeding to Mayo “step 2” the CAFC found that the additional steps of the claimed invention were routine and conventional, and therefore added nothing “new and useful” apart from their application to the natural phenomenon being diagnosed.  Therefore, the claims at issue failed to be patent eligible despite the court’s acknowledgement that the claimed subject matter, when considered as a whole, were novel and unforeseen.

In the today’s NYIPLA Supreme Court amicus brief, the organization argues, inter alia, that: (1) the CAFC failed to properly consider the important issue of “preemption” (i.e., whether the claimed invention raised a concern that others would be preempted by the patent claims from future use of a natural phenomenon); (2) the CAFC erred in treating the Mayo  test as an exclusive and definitive test for patent eligibility (even rendering “moot” a preemption analysis), whereas the Supreme Court has previously stressed that its patent eligibility findings “accord[ed]” with their concern about preemption (see Alice, 134 S. Ct. at 2358); and (3) the CAFC erred in interpreting Mayo to require divorcing the natural phenomenon from the remaining steps of the claimed invention, rather than considering the claimed invention as a whole – despite the Supreme Court’s longstanding jurisprudence requiring that claims must be considered “as a whole” in a patent eligibility analysis (see, e.g., Diamond v. Diehr, 450 U.S. 175, 188 (1981)).

The Sequenom case is of vital importance for owners of U.S. patents across the United States and throughout the world, and our firm is very proud of Dr. Miller’s role in the case.  We will continue to follow this important issue for our clients and other IP owners.

Eaton & Van Winkle’s attorneys have substantial experience in patent, trademark and copyright prosecution, litigation and licensing.  We stand ready to work with your company’s legal team to address your IP matters.  For further information, please contact us at IP@evw.com.

©  Eaton & Van Winkle, LLP, 2016.  All rights reserved.  This memorandum was prepared as a service to clients and friends of the firm to report on recent developments that may be of interest to them.  The information in it is therefore general, and should not be considered or relied on as legal advice.