Federal Circuit denies Illumina’s writ request in Ariosa dispute

The US Court of Appeals for the Federal Circuit has said it won’t review a writ filed by Illumina and its subsidiary Verinata Health in a patent dispute with Ariosa Diagnostics.

The two companies sought a  writ of mandamus asking the US District Court for the Northern District of California to strike portions of contentions by Ariosa and its parent company Roche Molecular System that Illumina’s patents were invalid.

In denying the writ, the Federal Circuit said: “We conclude on the record presented that petitioners’ right to relief is not clear and indisputable.”

The dispute arose in 2014 after Illumina and Verinata brought a case against Ariosa alleging that its pre-natal testing product infringes their US patent numbers 8,318,430 and 7,955,794.

Ariosa sought an inter partes review of each asserted patent based on numerous grounds, but the Patent Trial and Appeal Board (PTAB) instituted review on only one of the grounds raised.

Following the PTAB’s decision that the patents were “not unpatentable” on the instituted ground, Illumina moved to strike substantial portions of Ariosa’s district court invalidity contentions.

Filed in January, Illumina’s writ of mandamus claimed that the Federal Circuit should review the  district court’s ruling which had refused “to apply properly the statutory of estoppel”.

The district court had held that Ariosa and Roche were “barred from raising obviousness and anticipation grounds that the board had instituted and addressed in its final written decisions, as well as a ground that it considered to be a subset of those grounds”, according to the Federal Circuit.

It added: “The district court otherwise denied petitioners’ motion to strike as to the disputed issues before it.”

Illumina asked the court to clarify rules on whether arguments can be brought at a district court if they have been brought at the PTAB.

According to the court: “The current state of the binding precedent does not compel a finding that the district court clearly abused its discretion or usurped judicial power.”

The Federal Circuit also said that Illumina failed to satisfy the requirements that it has no other “adequate remedy available to them to obtain the relief sought”.

“The petition is therefore denied without prejudice to these issues being raised on appeal after final judgment,” the Federal Circuit concluded.