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Claims Using Naturally-Occurring Phenomenon in Method of Preparation Found Patent Eligible

| David C. O’HairChristie Matthaei

ILLUMINA, INC. v. ARIOSA DIAGNOSTICS, INC.

Before Lourie, Moore, and Reyna. Appeal from the Northern District of California.

Summary: Use of a natural phenomenon in a method of preparation claim found patent eligible under § 101.

Illumina, Inc. (“Illumina”) sued Ariosa Diagnostics, Inc. (“Ariosa”) alleging infringement of patents directed to methods of extracting fetal DNA from the blood of a pregnant woman based on the size difference between fetal DNA and maternal DNA.  The District Court for the Northern District of California granted summary judgment in favor of Ariosa, ruling that Illumina’s patents were invalid under 35 U.S.C. § 101 as being directed to a natural phenomenon.

Illumina appealed and the Federal Circuit reversed finding that Illumina’s patents were directed to patent-eligible subject matter. The Court acknowledged that Illumina discovered a natural phenomenon (e.g., the difference in size between fetal and maternal DNA), but concluded that Illumina’s claims were not directed to the natural phenomenon.  Rather, the Federal Circuit found the claims were directed to methods that utilize the natural phenomenon (e.g., separation of the fetal DNA based on size using centrifugation, chromatography, electrophoresis, or nanotechnology).

Judge Reyna dissented.

Editor: Paul Stewart