March 20, 2020
On March 17, 2020, Weil won a significant victory for longtime client and biotech innovator Illumina before the Federal Circuit that broke new ground in the fast-evolving area of patent eligibility under 35 U.S.C. § 101, and reversed a trial court’s summary judgment order invalidating the claims, in favor of the defendant, Ariosa.
Two months after oral arguments in January 2020, the appellate court ruled 2-1, over a vigorous dissent, that the asserted claims in the patents-in-suit, which relate to DNA tests for Down syndrome, describe a “method of preparation,” distinguishing them from diagnostics patents that have not typically passed muster under the prevailing Alice/Mayo standard. This is the first time that the Federal Circuit has identified a “method of preparation” as a category in the patentable subject matter analysis.
The reversal continues a string of impressive victories Weil has achieved for Illumina in a multi-front patent battle against its competitor, Ariosa. These include a significant jury trial victory Weil achieved in January 2018 that netted Illumina $26M in lost profits and a verdict that Ariosa had infringed two Illumina patents relating to prenatal testing – which was recognized as a 2018 “top trial verdict” by Daily Journal. To read more about that victory, please read here.
The Weil team was co-led by Weil Patent Litigation and Life Sciences practices Co-Head Edward Reines and Patent Litigation partner Derek Walter, and included Patent Litigation associate Christopher Lavin.