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Sequenom Files Petition With Supreme Court to Review Decision Invalidating NIPT Patent

NEW YORK (GenomeWeb) – Sequenom has filed a petition with the US Supreme Court to review decisions by lower federal courts that ruled certain claims of one of its patents ineligible, the company said today.

In a statement, Sequenom said the Supreme Court is "uniquely suited to reconcile" patent ineligibility criteria established in the Mayo Collaborative Services v. Prometheus Laboratories decision, which the federal district courts cited in deeming Sequenom's US Patent No. 6,258,540 unpatentable.

"We continue to believe that the groundbreaking techniques embodied in the '540 patent are eligible for patent protection," CEO Dirk van den Boom said in a statement. In addition, he added, that the case provides an opportunity for the Supreme Court to "clarify patent eligibility criteria to protect the significant investments made by Sequenom and other life sciences organizations."

Sequenom's '540 patent, entitled "Non-invasive prenatal diagnosis," has been at the center of a number of lawsuits involving Sequenom and other noninvasive prenatal test developers since 2011. In 2013, the US District Court for the Northern District of California found the patent ineligible, a ruling that was upheld in June by the US District Court of Appeals for the Federal Circuit.

However, in the June ruling, Circuit Judge Richard Linn suggested in a concurring opinion for the appeals case that if it had not been for precedents set by the Mayo v. Prometheus case, he might have ruled differently. For instance, he wrote that he agreed with the invalidation ruling "only because I am bound by the sweeping language" set out in Mayo v. Prometheus.

In its petition to the Supreme Court, Sequenom cited Linn's opinion and argued that "every intuition points to patent-eligibility" for the '540 patent, but the judges in the case ruled that it was unpatentable because of the Mayo case. As such, Sequenom wrote that this is the "perfect case" for the Supreme Court to "clarify Mayo and articulate a principled line in this now severely muddied area of law."

According to a statement from Kaye Scholer, the law firm representing Sequenom, the request for clarification is "consistent with the Supreme Court's previous statements that more latitude should be allowed when a discoverer of a new law of nature comes up with an inventive method applying that discovery."

The Supreme Court is able to consider Sequenom's petition, called a writ of certiorari, at its own discretion. Granting the writ is not a guarantee that the Supreme Court will actually hear the case. Rather, a granted writ is instead a request for all the documents related to the case from the lower courts. The court will then decide, based on those documents, whether to hear the case.

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