Magistrate judge recommends action in Section 101 case

Magistrate judge Christopher Burke has recommended that the US District Court for the District of Delaware affirm a motion to dismiss a patent infringement case related to the patent eligibility of subject matter, as laid out in 35 USC §101.

In 2012, Australian DNA testing and forensic consultant Genetic Technologies sued genomic testing company LabCorp and personal genome service 23andMe for directly and indirectly infringing its US patent 7,615,342.

Patent ’342, called “ACTN3 genotype screen for athletic performance” claims methods for selecting or matching a sport to an individual, using genetic screening, to increase their chances of success.

Methods claimed in the ’342 patent include findings that the presence of certain genes is correlated with elite sprinting, strength or power performance in an individual.

LabCorp and 23andMe argued that claim 1 of the patent was directed to non-patent-eligible subject matter, and moved to dismiss Genetic Technologies’ complaint.

The case was argued in July last year, although after those proceedings the parties sent several supplemental letters to apprise the court of recent opinions, including Supreme Court decisions, that might have an impact on Section 101-related issues.

In his recommendation, which referenced the Alice and Mayo cases, Burke said that the defendants’ complaint is warranted as the patent claims are directed to the discovery of a natural law: “That is, that individuals with a particular genetic variation are better than those without it,” he said.

He concluded that claim 1 is not eligible for patent protection, and recommended the Delaware court grant the defendant’s motion to dismiss.

Last November, the US Food and Drug Administration ordered that 23andMe stop providing its health-related genetic tests, claiming that the company had failed to provide evidence that the tests were “analytically or clinically validated”.