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2 January 2019Americas

Court invalidates Illumina patents in Ariosa row

Ariosa Diagnostics, a subsidiary of Swiss healthcare firm Roche, has won a patent dispute with American biotechnology firm Illumina.

Illumina sued Ariosa on two counts of patent infringement in May 2018, prompting Ariosa to counterclaim in July. Ariosa sought a summary judgment of non-infringement and invalidity of the asserted patents.

The US District Court for the Northern District of California issued summary judgment on December 24.

Illumina claimed that Ariosa’s Harmony Prenatal Test infringed two of its patents (US numbers 9,580,751 and 9, 9,738,931). Illumina is the exclusive licensee of both patents, which are called “Non-invasive detection of fetal genetic traits”.

The patents covered the extraction of foetal DNA from plasma samples of pregnant women and the selective removal the DNA fragments greater than approximately 300 or 500 pairs.

Ariosa’s Harmony Prenatal Test detects foetal chromosomal abnormalities by sequencing DNA from blood samples drawn from pregnant women. The company claimed that the patents in suit should be declared invalid as they covered naturally-occurring phenomena.

The court cited the US Supreme Court’s 2011 finding in Mayo Collaborative Services v Prometheus Laboratories that said “laws of nature, natural phenomena, and abstract ideas are not patentable”.

In its ruling, the district court found that the patents covered a test of naturally-occurring DNA and did not transform the naturally-occurring product into something new. According to the ruling, the three phases outlined in the patents—extraction, size discrimination and removal—were “routine and conventional”, and did not constitute an “inventive concept”.

The court directed both parties to file a joint statement identifying “the issues which remain to be decided” in the case by Wednesday, January 9.

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22 March 2021   For smaller companies and universities, deciding where to validate a pharma patent can be difficult. Sarah Kostiuk-Smith of Mewburn Ellis looks at the options within the European Patent Convention countries.
Americas
17 May 2018   Illumina and Sequenom have filed a patent infringement case against Ariosa Diagnostics for a patent covering DNA testing in pregnant women.
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More on this story

Big Pharma
22 March 2021   For smaller companies and universities, deciding where to validate a pharma patent can be difficult. Sarah Kostiuk-Smith of Mewburn Ellis looks at the options within the European Patent Convention countries.
Americas
17 May 2018   Illumina and Sequenom have filed a patent infringement case against Ariosa Diagnostics for a patent covering DNA testing in pregnant women.
Biotechnology
29 May 2019   A subsidiary of China-based genome sequencing company BGI has filed a patent infringement suit against a US competitor.