Last week the Federal Circuit denied Sequenom’s petition for rehearing en banc to review patent eligibility of their cell-free fetal DNA patent, U.S. Pat. No 6,258,540 (the ’540 Patent). The District Court found the ’540 Patent invalid under 35 U.S.C. § 101 for being directed to ineligible subject matter under the U.S. Supreme Court precedent in Mayo v. Prometheus Laboratories, 132 S. Ct. 1298 (2012). The Federal Circuit affirmed and Sequenom filed the petition for rehearing en banc.
On August 28 and September 15, 2015, certain asserted claims of Exergen’s United States Patent No. 7,787,938 (the "'938 patent") were found invalid under 35 U.S.C. § 101 on two separate summary judgment motions. See Exergen Corp. v. Brooklands Inc. ("Brooklands"), No. 12-cv-12243-DPW (August 28, 2015) and Exergen Corp. v. Thermomedics, Inc. ("Thermomedics"), No. 13-cv-11243-DJC (September 15, 2015). The claims of the '938 patent at issue are directed to diagnostic methods for measuring body temperature based upon radiation and temperature measurements taken at the temporal artery at the side of the forehead. Readers, particularly with children, will recognize the Exergen thermometer as a popular tool for taking kids’ temperatures.
Arguing that its invalidated diagnostic patent claims were “collateral damage in what is properly a war on frivolously broad claims directed to things like correlation tables and actual strands of human DNA,” on August 13, 2015, Sequenom petitioned the Federal Circuit for an en banc review of its June 12 holding in Ariosa Diagnostics, Inc. v. Sequenom, Inc. In that strikingly sweeping decision, a Federal Circuit panel invalidated U.S. Patent 6,258,540 (the ’540 patent) as being directed to ineligible subject matter. Sequenom now warns that the panel decision “reads recent Supreme Court precedent to create an existential threat to patent protection for an array of meritorious inventions” beyond those in the personalized medicine and diagnostics industries:
If this Court does not step in and draw this line, the panel’s rule threatens to swallow many more meritorious inventions along with this one. The core of nearly every major innovation is the discovery of a fact about the natural world that motivates inventors to combine existing techniques to achieve new practical results.
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