(Adds comment from companies, concurring opinion)
By Andrew Chung
NEW YORK, June 12 A U.S. appeals court said on
Friday that the discovery of a new form of prenatal testing that
avoids the risks of invasive medical techniques was good for
science but did not deserve a patent.
The U.S. Court of Appeals for the Federal Circuit in the
District of Columbia said a patent held by genetic testing
company Sequenom Inc on detecting fetal DNA in a
pregnant woman's blood was invalid. The decision by the nation's
top patent court upholds a ruling by a lower federal court in
California and clears Roche Holding AG unit Ariosa
Diagnostics of infringement.
The appeals court said the DNA's presence in the blood fell
under the U.S. Supreme Court's rule against patenting natural
The decision is the latest to interpret two Supreme Court
decisions from 2012 and 2013 that made it harder to obtain
patents on naturally occurring substances and the tests used to
detect them, potentially putting a wide swath of biotech patents
Sequenom's innovation was in finding a way to use DNA found
in maternal blood samples that had previously been discarded as
medical waste in order to determine certain fetal
characteristics, such as gender. The method avoided the risk of
more-invasive tests, such as taking samples from the fetus or
placenta, the decision said.
But this innovation was still was not enough to deserve a
patent, the appeals court said.
While calling the test "a positive and valuable contribution
to science," the court said: "Even such valuable contributions
can fall short of statutory patentable subject matter, as it
Shares of Sequenom were up 3 cents at $3.35 in late
The case originated in 2011 and 2012 when San Diego-based
Sequenom and San Jose, California-based Ariosa sued each other
over the patent. Sequenom said Ariosa infringed with its Harmony
Ariosa's attorney, David Gindler, hailed the decision as a
victory and said preventing companies from patenting natural
phenomena allows researchers to freely perform their work, which
can lead to new treatments and benefits for patients. Sequenom
declined to comment.
In a unusual concurring opinion, one of the three judges on
the appeals panel, Circuit Judge Richard Linn, said he was
forced to invalidate the patent because of the unnecessarily
broad wording in one of the Supreme Court precedents, which he
is bound to follow. He said that Sequenom should have been
entitled to keep its patent.
The case is Ariosa Diagnostics et al. v. Sequenom, Inc et
al., in the U.S. Court of Appeals for the Federal Circuit, No.
14-1139 and 14-1144.
(Reporting by Andrew Chung; Editing by Alexia Garamfalvi and