Introduction

In 1996, Doctors Dennis Lo and James Waincoats discovered cell-free fetal DNA, particularly in maternal plasma and serum. Previous researchers had earlier discarded this portion of maternal blood samples as a waste. They applied and obtained a patent in 2001. The patent claimed paternity inherited in pregnancy.

In 2015, the United States’ court held the patent to be invalid in law as it was a matter that was naturally occurring under 35 USC 101. However, the present case involved two patents that were unrelated to those that the court invalidated. 

The claim had priority in the European patent. The application of which was filed in 2003. The patents were labelled “751” and “931”. However, unlike the earlier patent, both were related. They also had essentially identical specifications. The patents also brought problems subject to further research.

They showed that pregnant woman extracellular fetal DNA were present in maternal circulation. Thus, it could be detected in maternal circulation.

Discussion

Illumina instituted an action at the northern district court of California against Ariosa Diagnostics and two other companies, alleging infringement on their patents “751” and “931”. One of the defendants applied for summary judgment, alleging that the patents were invalid under 35 USC 101. The application was granted as the district court invalidated the patents. Therefore, the claims were said to be an ineligible subject matter.

The judgement was held in favour of the defendants. This led to an appeal before the US Court of Appeal of the Federal Circuit of the Court of Appeal reversed the district court by a panel majority. Although, a panel member dissented. The court further held the patents eligible.

One of the defendants subsequently filed a combined petition before the Federal Circuit for rehearing before the panel and en banc. In 2020, panel rehearing was granted but the full court denied rehearing en banc.

In the original opinion, Illumina’s patents were held as specific process steps. Therefore, not a natural phenomenon that was invalid. However, in the modified opinion, the panel’s majority decision remained the same but emphasized parameters indicating non-natural phenomenal.

Roche’s argument was rejected in the original and modified opinions as it did not fall under the Ariosa case of 2015. The panel’s majority stated that the claims were not patent-ineligible concepts because analyzing fetal chromosomal aberrations were not a natural phenomenon.

Unlike Judge Lourie and Moore, Judge Reyna dissented in both original and modified opinions.

In his original opinion, he said there were only mere changes to the natural phenomenon. Thus, the claims were patent ineligible.

In his modified opinion, he added that the process did not alter the natural phenomenon. He proceeded that the processes involved were naturally occurring. Judge Reyna criticized the panel’s majority as they failed to address the claimed advanced inquiry subsequently.

Conclusion

The full court denied hearing en banc subsequent to the issuance of the panel rehearing. Quite strangely, none of the Judges stated reasons for denial of hearing en banc.

Source: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1419.OPINION.8-3-2020_1629537.pdf 

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C. 

PATENT, Trademark and IP Law Blog

  • Marin Cionca9/13/2023 2:06:32 PM

    So, who owns the “X” trademark? Is it Facebook or is it Elon Musk and his Twitter?

    More
  • Marin Cionca7/14/2023 10:20:00 PM

    CIONCA IP Supports OCIPLA

    More
  • Marin Cionca6/1/2023 11:29:01 PM

    CIONCA IP WINS AT TTAB CANCELATION OF TRADEMARK REGISTRATION FOR ORANGE COUNTY CLIENT

    More
  • CIONCA IP - MC4/1/2023 5:21:45 PM

    UNICOLORS, INC. v. H&M HENNES & MAURITZ L. P. – A Synopsis of a Copyright Infringement Case

    More
  • CIONCA IP - MC1/14/2023 2:21:06 PM

    Broad specification or broad claims in a patent application?

    More
  • CIONCA IP - EC12/23/2022 9:28:33 PM

    Is Mariah Carey the “Queen of Christmas”?

    More
  • CIONCA IP - MC10/7/2022 9:33:56 PM

    Rejection of Invention or Rejection of Patent Claims?

    More
  • CIONCA IP (MC)7/13/2022 5:27:56 PM

    Who is the owner of the trademark? Priority and Senior User Disputes

    More
  • CIONCA IP TEAM (SE)5/6/2022 5:19:00 PM

    Documentarian

    More
  • CIONCA IP TEAM (SE)4/29/2022 4:56:42 PM

    An Apple from the Apple Tree

    More
  • CIONCA IP TEAM (SE)4/22/2022 4:44:26 PM

    Electrochemiluminescence

    More
  • CIONCA IP TEAM (SE)4/8/2022 4:51:08 PM

    Gametime

    More
  • CIONCA IP TEAM (BS)4/1/2022 5:05:16 PM

    Screentime

    More
  • CIONCA IP TEAM (SE)3/25/2022 4:58:23 PM

    Internet Protocol Addresses

    More
  • CIONCA IP TEAM (BS)3/16/2022 5:00:54 PM

    We TINK It Should Be Protected

    More
  • CIONCA IP TEAM (SE)3/4/2022 4:54:18 PM

    Tinker Bell

    More
  • CIONCA IP TEAM (SE)2/25/2022 5:01:34 PM

    Computer Memory

    More
  • CIONCA IP TEAM (SE)2/18/2022 4:22:47 PM

    Machine or Transformation

    More
  • CIONCA IP TEAM (SE)2/11/2022 4:52:28 PM

    Air Force 1

    More
  • CIONCA IP TEAM (SE)1/14/2022 4:52:22 PM

    Fees and more Fees?

    More
  • CIONCA IP TEAM (SE)12/17/2021 4:51:21 PM

    Royalty or Lowborn

    More
  • CIONCA IP TEAM (SE)12/10/2021 5:06:54 PM

    Short-Range Wireless Networks

    More
  • CIONCA IP TEAM (SE)12/3/2021 4:58:39 PM

    TIGHT or TITE

    More
  • CIONCA IP TEAM (SE)11/19/2021 4:57:10 PM

    TAG Your It!

    More
  • CIONCA IP TEAM (SE)11/12/2021 4:56:57 PM

    Medical Patents

    More
  • CIONCA IP TEAM (SE)11/5/2021 4:40:14 PM

    Authentic Army

    More
  • CIONCA IP TEAM (SE)10/29/2021 4:49:28 PM

    Scouting Trademarks

    More
  • CIONCA IP TEAM (SE)10/22/2021 4:10:03 PM

    Free Speech and Trademarks

    More
  • CIONCA IP TEAM (SE)10/15/2021 4:55:32 PM

    DNA of Patents

    More
  • CIONCA IP TEAM (SE)10/8/2021 5:02:03 PM

    Backyard Trademarks

    More
  • CIONCA IP TEAM (SE)10/1/2021 4:58:25 PM

    Take a seat and read about seats

    More
  • CIONCA IP TEAM (SE)9/24/2021 5:15:50 PM

    Let's take a ride on the Segway!

    More
  • CIONCA IP TEAM (SE)9/17/2021 4:57:53 PM

    An Apple off the Apple Tree

    More
  • CIONCA IP TEAM (SE)9/10/2021 4:59:08 PM

    VROOM VROOM VROOM

    More
  • CIONCA IP TEAM (SE)9/3/2021 4:56:24 PM

    On Copyrights of Annotations.

    More
  • CIONCA IP TEAM (SE)8/27/2021 4:55:40 PM

    Rejecting Trademark Contracts

    More
  • CIONCA IP TEAM (SE)8/20/2021 4:42:46 PM

    It's a Bratz Girl, in a Barbie World (Pt. 2)

    More
  • CIONCA IP TEAM (SE)8/13/2021 4:57:49 PM

    Personalized Medication

    More
  • CIONCA IP TEAM (SE)8/6/2021 4:39:04 PM

    It's a Bratz Girl, in a Barbie World

    More
  • CIONCA IP TEAM (SE)7/31/2021 3:21:56 AM

    Ice Cream, You Scream

    More
  • CIONCA IP TEAM (SE)7/23/2021 4:12:50 PM

    Cereal Killer

    More
  • CIONCA IP TEAM (SE)7/16/2021 5:00:45 PM

    Buy me a ring, darling

    More
  • CIONCA IP TEAM (SE)7/7/2021 2:52:33 PM

    Offensiveness vs Free Speech in Trademark Law

    More
  • CIONCA IP TEAM (SE)6/25/2021 4:45:12 PM

    Woof Woof - Trademark Law

    More
  • CIONCA IP TEAM (SE)6/18/2021 5:29:44 PM

    Forum Selection 101

    More
  • CIONCA IP TEAM (SE)6/11/2021 4:23:58 PM

    Willful v Innocent

    More
  • CIONCA IP TEAM (SE)5/17/2021 2:38:30 PM

    Thryv, Inc. v. Click-To-Call Technologies, LP

    More
  • CIONCA IP TEAM (SE)4/23/2021 5:34:02 PM

    Oracle Patent Problems

    More
  • CIONCA IP TEAM (SE)4/5/2021 5:38:23 PM

    Blockchain and the Expanding US Patent Landscape

    More
  • CIONCA IP TEAM (MC)3/24/2021 2:19:11 PM

    Invention and Art Analogy

    More
  • CIONCA IP TEAM (BR)1/19/2021 4:57:54 PM

    QuikTrip West, Inc. v. Weigel Stores, Inc.

    More
  • CIONCA IP TEAM (AP)12/7/2020 4:06:28 PM

    St Jude Medical LLC v Snyders Heart Valve LLC

    More
  • CIONCA IP TEAM (SE)12/1/2020 5:07:58 PM

    Allen v. Cooper, Governor of North Carolina

    More
  • CIONCA IP TEAM (JM)10/8/2020 2:57:24 PM

    Royal Crown Company Inc., Dr. Pepper/Seven Up Inc., v The Coca-Cola Company

    More
  • CIONCA IP TEAM (SG)10/6/2020 2:42:35 PM

    Apple, Inc., v. Voip-Pal.com, Inc.: Sanction Orders and Obviousness

    More
  • CIONCA IP Team (SE)9/16/2020 4:21:45 PM

    CIONCA IP Launches New Online Patent Website

    More
  • CIONCA IP Team9/15/2020 5:11:49 PM

    Comparing Apples to Apples: TTAB on In re Horizon Group USA, Inc.

    More
  • CIONCA IP Team9/3/2020 4:30:41 PM

    D2 Holdings v. House of Cards

    More
  • CIONCA IP Team8/31/2020 12:09:17 PM

    Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC: Obviousness

    More
  • CIONCA IP Team8/11/2020 11:56:24 AM

    Adidas AG v. Nike INC.

    More
  • CIONCA IP Team7/20/2020 7:40:21 PM

    Fitbit Inc. v. Valencell Inc.: Joint Parties in IPR Proceeding

    More
  • CIONCA IP Team7/14/2020 7:51:31 PM

    CIONCA IP Launches New Online Trademark Website

    More
  • CIONCA IP 5/19/2020 7:36:30 PM

    Uber Technologies, Inc. v. X One, Inc.: “Obvious to Try” Rationale

    More
  • Marin Cionca4/15/2020 4:41:43 PM

    The Day After COVID-19 Pandemic – Hope or Fear?

    More
  • CIONCA IP4/13/2020 9:33:36 PM

    Two of a Kind: TTAB on Shannon DeVivo v. Celeste Ortiz

    More
  • CIONCA IP3/16/2020 8:43:10 PM

    GS CleanTech Corporation v. Adkins Energy, LLC: Inequitable Conduct

    More
  • CIONCA IP3/10/2020 7:45:30 PM

    Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.

    More
  • Marin Cionca2/9/2020 7:46:10 PM

    Analogous Prior Art or Not? A critical patent obviousness question

    More
  • CIONCA IP 1/15/2020 4:47:19 PM

    FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus

    More
  • CIONCA IP 1/9/2020 4:43:58 PM

    The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.

    More
  • CIONCA IP 12/31/2019 4:29:41 PM

    The Chamberlain Group, INC. v. One World Technologies, INC.

    More
  • Marin Cionca12/9/2019 8:07:20 PM

    A “glove” approach to patent claim construction

    More
  • 11/15/2019 8:15:11 PM

    Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying

    More
  • CIONCA IP10/16/2019 1:28:13 PM

    To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment

    More
  • CIONCA IP10/7/2019 5:44:50 PM

    A Decision in Henny Penny Corporation v. Frymaster LLC

    More
  • Marin Cionca9/27/2019 9:32:48 PM

    Can an Online Patent Attorney File My Patent?

    More
  • CIONCA Team Member9/4/2019 7:20:46 PM

    Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries

    More
  • CIONCA Team Member8/19/2019 7:46:17 PM

    In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction

    More
  • CIONCA Team Member8/5/2019 2:29:33 PM

    Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation

    More
  • CIONCA Team Member7/5/2019 2:22:42 PM

    In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications

    More
  • CIONCA Team Member6/27/2019 7:41:52 PM

    Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.

    More
  • Marin Cionca6/11/2019 8:43:17 PM

    Can I Successfully License My Invention?

    More
  • CIONCA Team Member5/20/2019 8:25:57 PM

    PTAB Designates Cases as Precedential

    More
  • CIONCA Team Member5/7/2019 7:13:41 PM

    The Federal Circuit Defines a Technological Invention

    More
  • Marin Cionca4/17/2019 3:48:33 PM

    What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

    More
  • CIONCA Team Member4/3/2019 7:25:37 PM

    The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential

    More
  • CIONCA Team Member3/21/2019 3:49:43 PM

    Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.

    More
  • Marin Cionca3/1/2019 9:36:50 PM

    USPTO Director Andrei Iancu Visits Orange County!

    More
  • CIONCA Team Member2/19/2019 7:12:46 PM

    Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims

    More
  • CIONCA Team Member2/5/2019 7:22:27 PM

    TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC

    More
  • Marin Cionca1/23/2019 9:45:30 PM

    Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent

    More
  • CIONCA Team Member1/4/2019 4:12:21 PM

    In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement

    More
  • CIONCA Team Member12/18/2018 6:12:48 PM

    Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname

    More
  • Marin Cionca12/8/2018 8:35:06 PM

    IP Assets - Procurement, Enforcement, Monetization

    More
  • CIONCA Team Member11/19/2018 1:07:51 PM

    The Appeals Process

    More
  • CIONCA Team Member10/16/2018 6:50:31 PM

    A Double-Edged Sword: Benefit of Priority or Longer Patent Term

    More
  • Marin Cionca10/1/2018 7:42:12 PM

    Can I Register a Color as a Trademark or Service Mark?

    More
  • CIONCA Team Member9/17/2018 4:33:20 PM

    Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.

    More
  • Staff8/31/2018 7:26:58 PM

    Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout

    More
  • Staff8/16/2018 4:24:01 PM

    Correcting or Changing a Patent After Issue Through the Central Reexamination Unit

    More
  • Marin Cionca7/31/2018 6:50:05 PM

    My patent expired? Can I still sue for patent infringement?

    More
  • 7/3/2018 7:44:33 PM

    Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation

    More
  • CIONCA IP5/17/2018 9:54:58 PM

    Marin Cionca Presents at OCIPLA May 2018 Luncheon

    More
  • 5/4/2018 7:37:51 PM

    The Hague System for Protection of International Designs

    More
  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

    More
  • CIONCA Staff4/13/2018 9:10:04 PM

    It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision

    More
  • 3/20/2018 12:50:05 PM

    Andrei Iancu - New Director of the USPTO

    More
  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance

    More
  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

    More
  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

    More
  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

    More
  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

    More
  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

    More
  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

    More
  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

    More
  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

    More
  • Staff9/28/2017 7:27:22 PM

    CIONCA

    More
  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

    More
  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

    More
  • staff9/15/2017 9:33:30 PM

    cionca

    More
  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

    More
  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

    More
  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

    More
  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

    More
  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

    More
  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

    More
  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

    More
  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

    More
  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

    More
  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

    More
  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

    More
  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

    More
  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

    More
  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

    More
  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

    More
  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

    More
  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

    More
  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

    More
  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    More
  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

    More
Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY
CIONCA IP's Patents and Trademarks Success Numbers as of 2022

About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.

HOME      CIONCA IP Twitter Account      CIONCA IP Facebook Account     

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198