English High Court upholds Sequenom patent for prenatal test

US-based gene sequencing company Sequenom was handed a win yesterday after a UK court ruled that The Doctors Laboratory ( TDL) and Ariosa Diagnostics, which is owned by Roche, had infringed its patent.

In a judgment yesterday, June 17, the English High Court held that the claims of the patent in dispute were not obvious in light of prior art and TDL had infringed at least claim 1 of the patent.

US-based company Sequenom owns the patent (UK number 1,524,321), which was registered in 2003 and covers the “non-invasive detection of fetal genetic traits”. Illumina has been the exclusive licencee of the patent since January 2019.

In 2016 Illumina claimed that TDL’s use of a prenatal test, the Harmony Test, which was provided by Ariosa Diagnostics, infringes its patent.

Ariosa, which was also named as a defendant, admitted that it would be jointly liable for any infringement by TDL.

TDL denied infringement and sought to have the patent revoked on grounds of obviousness.

The Doctors Laboratory and Ariosa argued that Ikeda, a Japanese conference abstract which was published in 2003, disclosed a method which would make the invention in the ‘321 patent obvious to a person skilled in the art. The court disagreed.

In their argument to the court, TDL and Ariosa argued that the scope of claim 1 was broader than the technical contribution made by the patent, but the court disagreed.

The court said “the patent discloses a general principle of technical utility” and the “breadth of the claims is commensurate with that technical contribution”.

Additionally, it said the fact that “on very rare occasions the invention is of no practical benefit”, does not detract from the fact that it is of technical utility in the vast majority of cases.

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