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28 August 2018Patents

EFF tells SCOTUS that inventions must be new

The Electronic Frontier Foundation (EFF) has urged the US Supreme Court to correct the US Court of Appeals for the Federal Circuit’s departure from the fundamental principle that “an invention must be new to be patentable”.

The EFF, which describes itself as the “leading non-profit organisation defending civil liberties in the digital age”, filed its amicus curiae brief on Wednesday, August 22.

In its brief, the EFF urged the Supreme Court to grant certiorari to Ariosa Diagnostics, a company owned by pharmaceutical multinational Roche.

Ariosa’s patent dispute dates back to 2014, when it filed a petition for the inter partes review of a patent related to prenatal blood testing.

Sequencing company Illumina owns the disputed patent (7,955,794), which covers methods for testing DNA for chromosomes associated with genetic disorders.

The US Patent Trial and Appeal Board said Ariosa did not demonstrate that a published patent application called ‘Fan’ is prior art. The reason was that Ariosa had failed to show that claims of Fan were supported by the disclosure of a separate provisional application.

On appeal to the Federal Circuit, Ariosa said that the board had “improperly extended” its burden in relation to prior art to published patent applications.

In 2017, the Federal Circuit said the board did not err in its decision, and dismissed the appeal.

Following the Federal Circuit’s finding, in January 2018, a jury at the US District Court for the Northern District of California held that Ariosa had infringed Illumina’s ‘794 patent, and ordered Ariosa to pay $27 million in damages.

In July, Ariosa filed a petition for a writ of certiorari.

Ariosa asked: “If a patent discloses but does not claim an invention, does that disclosure qualify as prior art as of the date of the application in which it was first made, such that no one else may patent the same invention based on a later-filed application?”

The EFF’s brief said that the Supreme Court has previously answered the question in the affirmative, but the Federal Circuit has since added an “improper requirement” onto this rule.

Ariosa said that the Federal Circuit instead held that an invention disclosed in a “first-in-time” patent application is not prior art against a later application unless it supports the claims of whatever patent results from the first application.

In its brief submitted last week, the EFF agreed that the Federal Circuit departed from established case law in upholding a patent that claimed an invention described in someone else’s earlier application.

Such a finding undermines the patent system’s goal of promoting innovation by “allowing patents on old and known ideas to continue impeding the economically fruitful endeavours of others”, the EFF said.

The EFF urged the court to reverse the decision in Ariosa’s dispute with Illumina, and direct the US Patent and Trademark Office “to invalidate patents, such Illumina’s, that claim subject matter already invented by others”.

The EFF’s 18-page amicus curiae brief was filed in collaboration with the R Street Institute, a non-profit policy research organisation.

A spokesperson for Roche told WIPR it is "disappointed" with the recent decision, and is reviewing the decision "and our legal options".

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