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.
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.”
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.