Creative Representation | Expert Litigation

Federal Circuit Declines Request for Rehearing En Banc in High Profile, Non-Invasive Prenatal Genetic Testing Patent Case, Preserving Victory for BartkoZankel Clients

The U.S. Court of Appeals for the Federal Circuit has denied the appellants’ request for rehearing en banc of the consolidated appeal of Ariosa v. Sequenom, Inc. and Natera v. Sequenom, Inc.  BartkoZankel clients Natera and DNA Diagnostics Centers, providers of non-invasive prenatal genetic tests, filed a declaratory judgment action in 2012 seeking a determination that defendant Sequenom’s patent is invalid.  After consolidating the case with a similar suit brought by Ariosa, Judge Susan Illston of the Northern District of California ruled that the patent-in-suit is invalid because its claims are not directed to patentable subject matter under 35 U.S.C. § 101.  In June 2015, a three-judge Federal Circuit panel unanimously affirmed Judge Illston’s decision.  The widely read Patently-O blog described the decision as the “leading case” in patentability jurisprudence.

Sequenom sought rehearing en banc and its request was supported by a dozen amicus curia briefs supporting review of the decision.  Despite extensive media attention and amici support, the Court refused to reexamine the case.  In concurring opinions, several judges found the decision consistent with and required by controlling Supreme Court precedent.  (View a PDF of the Opinion.)

Natera and its laboratory partner DNA Diagnostics offer the Panorama® prenatal genetic test.  Unlike earlier prenatal genetic tests that require amniocentesis, Natera’s test uses a simple blood sample taken from the mother.  Natera, with its advanced bioinformatics, detects cell-free fetal DNA and provides a report with less risk to both the mother and the fetus.  Sequenom, Inc. had alleged that Natera’s test infringed the patent-in-suit

BartkoZankel intellectual property litigators Paul Schuck and Sony Barari have represented Natera and DNA Diagnostics throughout this litigation.