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Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC

United States Court of Appeals for the Federal Circuit

July 3, 2019, Decided

2017-2508

Opinion

 [*1334]  ON PETITION FOR REHEARING EN BANC

Per Curiam.

ORDER

A petition for rehearing en banc was filed by appellants Athena Diagnostics,  [*1335]  Inc., Oxford University Innovation Ltd., and the Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V. A response to the petition was invited by the court and filed by appellees Mayo Collaborative Services, LLC and Mayo Clinic. Several motions for leave to file amici curiae briefs were filed and granted by the court. The petition for rehearing, response, and amici curiae briefs were first referred to the panel that heard the appeal, and thereafter, to the circuit judges who are in regular active service. A poll was requested, taken, and failed.

Upon consideration [**4]  thereof,

It Is Ordered That:

1) The petition for panel rehearing is denied.

2) The petition for rehearing en banc is denied.

3) The mandate of the court will issue on July 10, 2019.

July 3, 2019

Concur by: LOURIE; HUGHES; DYK; CHEN

Concur

Lourie, Circuit Judge, with whom Reyna and Chen, Circuit Judges, join, concurring in the denial of the petition for rehearing en banc.

I concur in the court's decision not to rehear this case en banc. In my view, we can accomplish little in doing so, as we are bound by the Supreme Court's decision in Mayo. Some of us have already expressed our concerns over current precedent. E.g., Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 753 n.4 (Fed. Cir. 2019); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1284 (Fed. Cir. 2015) (Lourie, J., concurring in the denial of rehearing en banc); id. at 1287 (Dyk, J., concurring in the denial of rehearing en banc).

If I could write on a clean slate, I would write as an exception to patent eligibility, as respects natural laws, only claims directed to the natural law itself, e.g., E=mc2, F=ma, Boyle's Law, Maxwell's Equations, etc. I would not exclude uses or detection of natural laws. The laws of anticipation, obviousness, indefiniteness, and written description provide other filters to determine what is patentable.

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927 F.3d 1333 *; 2019 U.S. App. LEXIS 19979 **; 2019 U.S.P.Q.2D (BNA) 246748; 2019 WL 2847219

ATHENA DIAGNOSTICS, INC., OXFORD UNIVERSITY INNOVATION LTD., MAX-PLANCK-GESELLSCHAFT ZUR FORDERUNG DER WISSENSCHAFTEN E.V., Plaintiffs-Appellants v. MAYO COLLABORATIVE SERVICES, LLC, DBA MAYO MEDICAL LABORATORIES, MAYO CLINIC, Defendants-Appellees

Prior History:  [**1] Appeal from the United States District Court for the District of Massachusetts in No. 1:15-cv-40075-IT, Judge Indira Talwani.

Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 2019 U.S. App. LEXIS 3645 (Fed. Cir., Feb. 6, 2019)

CORE TERMS

patent, diagnostic, invention, eligibility, natural law, laws of nature, discovery, detecting, steps, recited, ineligible, antibody, patients, en banc, conventional, label, diagnosing, disease, autoantibodies, correlations, disorder, Innovation, Clinic, abstract idea, bodily fluid, patent-eligible, metabolites, genetic, cancer, technologies