Ariosa Diagnostics, Inc. v. Sequenom, Inc.

Ariosa Diagnostics, Inc. v. Sequenom, Inc.

Opinion

 [***1154]   [*1284]  ON PETITION FOR REHEARING EN BANC

Per Curiam.

ORDER

A petition for rehearing en banc was filed by defendants-appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC. The petition for rehearing was first referred to the panel that heard the appeal, and thereafter, to the circuit judges who are in regular active service. A response was invited by the court and filed by plaintiffs-appellees Ariosa Diagnostics, Inc. and Natera, Inc. A poll was requested, taken, and failed.

Upon consideration thereof,

It Is Ordered That:

(1) The petition for rehearing en banc is denied.

(2) The mandate of the court will issue on December 9, 2015.

December 2, 2015

Concur by: LOURIE; DYK

Concur

Lourie, Circuit Judge, with whom MOORE, Circuit Judge, joins, concurring in the denial of the petition for rehearing en banc.

I concur in the court's [**5]  denial of rehearing en banc in this case, based on the precedent of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.    , 132 S. Ct. 1289, 182 L. Ed. 2d 321 (2012). I do so because I find no principled basis to distinguish this case from Mayo, by which we are bound. I write separately to express some thoughts concerning laws of nature and abstract ideas, which seem to be at the heart of patent-eligibility issues in the medical sciences.

Since the Supreme Court's decision in Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 177 L. Ed. 2d 792 (2010), the issue of patent eligibility under § 101 has been of key importance in the adjudication of patent cases, particularly in the field of software. The Court's decisions in Mayo, Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.    , 133 S. Ct. 2107, 186 L. Ed. 2d 124 (2013), and Alice Corp. v. CLS Bank International, 573 U.S. ___, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014), have further brought the focus onto the field of medical diagnostics.

The Supreme Court in Mayo determined that the claims in that patent "set forth laws of nature." It further held in Mayo that steps additional to those setting forth laws of nature in a claimed process must add something "that in terms of patent law's objectives ha[ve] significance" to the natural laws, such that those steps transform the process into an inventive application of those laws. Mayo, 132 S. Ct. at 1299. Moreover, the Court rejected "post-solution activity that is purely conventional or obvious" as not significant enough to bring a claimed invention within the realm of patent-eligible [**6]  subject matter. Id. (internal quotation marks and alteration omitted).

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