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)").  Last month, 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.  On August 27, twelve amicus curiae briefs were filed in support of Sequenom's petition for rehearing en banc.  Over the past few weeks, Patent Docs has been examining these amicus briefs.  Here, we review the brief submitted by the New York Intellectual Property Law Association (NYIPLA).

In its brief, the NYIPLA is described as "a professional association of approximately 1,300 attorneys whose interests and practices lie in the area of patent, trademark, copyright, trade secret and other intellectual property law."  The NYIPLA notes that a "primary concern" of the association "is that the law applicable to intellectual property be developed in a way that enhances the ability of the clients of its members to conduct their businesses with reasonable certainty concerning the predictability of whether certain patent claims covering inventions developed by them are patent eligible."

The NYIPLA brief focuses primarily on "the role of preemption in the patent eligibility analysis mandated by Mayo and Alice," noting that:

The Supreme Court has long recognized that the proper test for determining patent eligibility is whether the claimed subject matter falls within one of the four statutory classes of subject matter and does not preempt what this Court has called a "fundamental principle" (i.e., abstract idea, natural phenomena or law of nature).  See Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)) [emphasis in brief].

Arguing that "[n]either Mayo nor Alice changed this," the NYIPLA contends that neither case "authorize[d] a court to ignore the ultimate question, i.e., does the claim preempt a fundamental principle instead of merely claim a practical application of such a principle."

In the latter part of the brief, the NYIPLA sets forth its argument that the two-part framework of Mayo and Alice does not moot preemption.  Pointing out that "Sequenom offered evidence that there are other uses of cffDNA other than those claimed in the '540 patent," the brief suggests that "thus, preemption did not exist."  Noting that the Ariosa panel concluded that "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot" (emphasis in brief), the amicus submits that the Ariosa panel's conclusion "is clear error and needs to be corrected."

The brief also argues that the Ariosa panel "erroneously applied the Mayo framework in a mechanical manner . . . , ignoring the goal of the inquiry -- to determine if the claim includes enough 'something more' to avoid preempting the fundamental principle in question," and contends that "[t]his type of rigid analysis of prior Supreme Court patent-eligibility frameworks was rejected in Bilski v. Kappos, 561 U.S. 593 (2010) and is likewise incorrect here."  According to the brief, "[t]he failure to consider preemption has resulted in courts and the PTO over-using §101 in a gatekeeper or threshold fashion for which it was never intended to be used, either as enacted by Congress or as interpreted by the Supreme Court."  The amicus contends that the Ariosa panel's failure to consider preemption when applying the framework of Mayo constituted legal error, and therefore concludes that the full Court should grant rehearing to correct that error en banc.

For additional information regarding this topic, please see:

• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Novartis AG," September 23, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Paul Gilbert Cole," Setember 22, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Bioindustry Association," September 20, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: WARF, Marshfield Clinic, and MCIS, Inc.," September 17, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: BIO and PhRMA," September 16, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Amarantus Bioscience Holdings, Personalis, Inc., and Population Diagnostics, Inc.," September 15, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Coalition for 21st Century Medicine," September 14, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: IPO," September 8, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Professors Lefstin and Menell," September 6, 2015
• "Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: 23 Law Professors," September 3, 2015
• "Amici Support Sequenom's Petition for Rehearing En Banc," August 28, 2015
• "Sequenom Requests Rehearing En Banc," August 18, 2015
• "Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015), June 22, 2015