Sequenom Deal May Avoid Federal Circuit Decision

15 December 2014 PharmaPatents Blog

Less than a month after their case was argued at the Federal Circuit, Illumina Inc. and Sequenom Inc. have announced a deal to settle their patent infringement litigation. While I haven’t seen an order dismissing the case, that is a likely next step. 

The Press Release

Sequenom announced the deal on its website on December 3, 2014:

Illumina, Inc. (NASDAQ: ILMN) and Sequenom, Inc. (NASDAQ: SQNM) today announced they have agreed to settle all pending infringement claims and other disputes between Sequenom and Verinata Health, Inc.  The parties will pool their owned and in-licensed intellectual property directed to noninvasive prenatal testing (NIPT), including patents that will remain the subject of ongoing interference proceedings.

According to the announcement, “Illumina will make a $50 million upfront payment to Sequenom” and also has “certain ongoing commitments for payments to Sequenom from the patent pool structure through 2020.”

Saved by the Bell?

If the parties obtain dismissal of the pending Federal Circuit appeal before the court renders its decision, will the diagnostics industry have been spared a negative decision on patent eligibility?

Claim 1 of the patent at issue (U.S. Patent 6,258,540) recites:

A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

When I listened to the oral argument, this statement by Judge Linn caught my attention:

Once you recognize that [there is paternally inherited information in the fetal sample] then there’s nothing beyond that other than applying conventional techniques to go find it … I’m not saying that shouldn’t be rewarded with a patent, but I’m living under a regime set by the Supreme Court.

Perhaps by avoiding a decision in this case, the diagnostics industry can continue to believe that such method claims do satisfy 35 USC § 101, at least until the Federal Circuit is forced to render a decision that holds otherwise.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services

Insights