BIO and PhRMA file petition supporting Illumina

Two biotech associations have filed a petition asking the US Court of Appeals for the Federal Circuit to clarify rules on whether arguments can be brought at a district court if they have been brought at the US Patent and Trademark Office.

The Biotechnology Innovation Organization (BIO) and non-profit association, the Pharmaceutical Research and Manufacturers of America (PhRMA), filed the joint petition on Wednesday, March 1.

The associations have asked the court to “answer a critical question that is creating mounting confusion” regarding the rulings in inter partes reviews (IPR).

They have urged the Federal Circuit to hear a writ of mandamus,which was filed by Illumina in January, centring on Illumina’s dispute with Ariosa over patent infringement.

In relation to the provisions of the America Invents Act, Congress extended IPR estoppels to “any ground that the petitioner raised or reasonably could have raised during” an IPR.

In Illumina’s petition for writ of mandamus, the company argued that the Federal Circuit should review a district court’s ruling to refuse “to apply properly the statutory estoppel.”

In 2014, Illumina sued Ariosa for patent infringement at the US District Court for the Northern District of California.

Ariosa then counterclaimed for breach of contract, arguing that under the terms of a supply agreement, it had a licence for the patent in dispute.

The patent infringement dispute arose after Ariosa planned to develop a non-invasive prenatal diagnostic test for the detection of fetal aneuploidies in 2009.

Verinata Health, which was bought by Illumina in 2013, had also sued Ariosa for patent infringement in 2012, but those claims did not form part of the appeal.

Illumina’s attempt to compel arbitration failed as the district court, followed by the Federal Circuit, concluded that Ariosa’s counterclaims were not subject to arbitration.