Further Erosion of Patent Protection for Diagnostics: The Federal Circuit Denies En Banc Rehearing in Ariosa Diagnostics, Inc. v. Sequenom Inc.

Both the district court held and the Federal Circuit affirmed that the patent claims at issue in Ariosa v. Sequenom were directed to patent ineligible subject matter under 35 U.S.C. § 101. Method claims directed to judicial exceptions (laws of nature, natural phenomena, and abstract ideas) are analyzed using a rigid framework as defined by the Supreme Court in Mayo v. Prometheus. The denials of Sequenom’s petition for an en banc rehearing by the Federal Circuit followed by the recent denial of Sequenom’s petition for a writ of certiorari by the Supreme Court insure that the current rigid Mayo framework will remain in force. This is despite the urgings from members of the Federal Circuit for the Supreme Court to clarify the Mayo test. This article discusses § 101 jurisprudence following the Myriad, Mayo, and Ariosa decisions and the detrimental effect it has had on the prosecution of patent applications directed to diagnostic inventions.