Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted claims of U.S. Patent No. 6,258,540 (see "Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015)").  On August 13, Sequenom filed a petition for rehearing en banc, arguing that the panel's decision in June was inconsistent with the Supreme Court's decisions in Diamond v. Diehr, 450 U.S. 175 (1981), Mayo v. Prometheus Laboratories, 132 S. Ct. 1289 (2012), and Association for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013, and that the panel's decision poses a threat to patent protection in multiple fields of invention.  Last week, twelve amicus curiae briefs were filed in support of Sequenom's petition for rehearing en banc.  Over the next few weeks, Patent Docs will examine these amicus briefs.  Here, we review the brief filed by twenty-three law professors*, which was submitted by Patent Docs author Kevin Noonan.

The brief begins by noting that while the amici -- twenty-three law professors who teach and write on patent law and policy -- "may differ amongst themselves on other aspects of modern patent law and policy, they are united in their professional opinion that this court should grant rehearing en banc because the panel decision's application of § 101 undermines the function of the patent system to promote and to legally secure twenty-first-century innovation."  The brief then proceeds to "offer two further insights as to how the panel decision undermines the essential function of the patent system in promoting new innovation."  In particular, amici argue that the Ariosa panel decision undermines "exactly the type of twenty-first-century innovation the patent system is designed to promote," and that the panel decision "would call into question nineteenth-century patented innovation the Supreme Court deemed valid."

With respect to the brief's first insight, the amici contend that the Ariosa panel decision "contravenes the Bilski Court's injunction that § 101 tests should not impede the progress of future innovation," noting that "[a]s the Bilski Court recognized, the patent system exists to promote new inventions on the frontier of human technological knowledge like genetic testing methods, which by necessity require massive R&D expenditures that can only be recouped via the protections offered by property rights in this innovation."  According to the amici, "[t]he panel decision contravenes this insight by the Supreme Court because it threatens to preclude many genetic and other diagnostic tests from the ambit of patent protection," and "disincentivizes making the massive R&D investments required to create this new innovation in the twenty-first century."

Turning to the professors' second insight, the brief cites Mayo Collaborative Services v. Prometheus Laboratories, Inc., where "the Supreme Court recognized that 'too broad an interpretation of this exclusionary principle [regarding laws of nature, natural phenomena and abstract ideas] could eviscerate patent law,'" since "'all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'"  The amici argue that "not only does the panel decision threaten an entire field of twenty-first-century inventive activity, it would also cast serious doubt about classic nineteenth-century patented innovation either validly issued under the patent laws or sustained by the Supreme Court," and present three examples in support of their argument.

The first, U.S. Reissue Patent No. 117, issued June 13, 1848, was involved in O'Reilly v. Morse, 56 U.S. 62 (1853).  Although the Supreme Court affirmed the validity of the first seven claims in that case, the brief contends that "the Ariosa panel's application of the Mayo test, if applied to Claim 1 of Morse's patent in the same way the panel applied it to Sequenom's patent, leads to the conclusion that Morse's Claim 1 is arguably unpatentable subject matter," which amici argue "directly contradicts the Supreme Court's analysis and decision in Morse that Claim 1 is valid."

The second, U.S. Patent No. 174,465, issued Mar. 7, 1876, was involved in Dolbear v. American Bell Telephone Co., 126 U.S. 1 (1888).  The brief contends that "applying the Ariosa panel's analysis to Claim 5 in Bell's patent leads to the same conclusion reached for Claim 1 of Morse's patent," adding that "contrary to the Supreme Court's own analysis and decision in 1888, the Ariosa panel's analysis leads to the logical conclusion that Bell's famous Claim 5 is unpatentable subject matter."

For the third and final example, the brief goes all the way back to the first patent ever issued: U.S. Patent No. X00001 (at left), granted July 31, 1790 to Samuel Hopkins.  Arguing that this patent, which is directed to a method of making potash (mined and manufactured salts that contain potassium in water-soluble form), would be invalid under the panel's application of the Mayo two-step test, amici state that "[t]his is significant because Hopkins' patent was signed by Thomas Jefferson as Secretary of State and as a member of the committee created under the 1790 Patent Act who reviewed Hopkins' application," adding that "Jefferson was both a drafter of some of the early patent laws and has long been known for his views that patents should be severely restricted in their issuance to inventors."  Amici argue that "when a contemporary court reaches a decision that calls into question a patent validly issued under the 1790 Patent Act and signed by Jefferson himself, it is cause to question whether this court has applied the law correctly."  The brief concludes by declaring that the panel decision "casts doubt on classic patented innovation validly issued or upheld by the Supreme Court, which "suggests that the Ariosa panel has misapplied § 101 jurisprudence and that the error is significant enough to warrant en banc consideration."

• The twenty-three law professors comprising the amici curiae on the brief are:  Dan L. Burk (University of California, Irvine School of Law), Bernard Chao (University of Denver Sturm College of Law), Ralph D. Clifford (University of Massachusetts School of Law), Christopher A. Cotropia (University of Richmond School of Law), Gregory Dolin (University of Baltimore School of Law), Richard A. Epstein (New York University School of Law), Christopher Frerking (University of New Hampshire School of Law), Yaniv Heled (Georgia State University College of Law), Timothy Holbrook (Emory University School of Law), Christopher M. Holman (UMKC School of Law), Gus Hurwitz (Nebraska College of Law), Mark D. Janis (Indiana University Bloomington Maurer School of Law), Adam Mossoff (George Mason University School of Law), Sean M. O’Connor (University of Washington School of Law), Kristen Osenga (University of Richmond School of Law), Lee Petherbridge (Loyola Law School), Michael Risch (Villanova University School of Law), Mark F. Schultz (Southern Illinois University School of Law), Sean B. Seymore (Vanderbilt University Law School), Ted Sichelman (University of San Diego School of Law), Brenda M. Simon (Thomas Jefferson School of Law), Shine Tu (West Virginia University College of Law), and Saurabh Vishnubhakat (Texas A&M University School of Law).