AS YET ANOTHER BIOTECH PATENT IS HELD INVALID UNDER §101, FEDERAL CIRCUIT JUDGE O’MALLEY INVITES THE COURT TO REVISIT ITS DECISION IN BRCA1 IN WHICH IT SUMMARILY HELD THAT ALL PRIMER CLAIMS ARE PATENT INELIGIBLE

ROCHE MOLECULAR SYS., INC. v. CEPHEID, Appeal No. 2017-1690 (Fed. Cir. October 9, 2018).  Before O’Malley, Reyna, and Hughes.  Appealed from N.D. Ca. (Magistrate Judge Laporte). (Subject Matter Ineligibility)

Background:

Roche sued Cepheid for infringement of Roche’s patent, which included diagnostic method claims and primer claims.

The diagnostic method claims were directed to a method for detecting Mycobacterium tuberculosis (MTB) in a biological sample.  The method included (i) subjecting DNA from the sample to polymerase chain reaction (PCR) using primers with specific DNA sequences that target MTB signature sequences, and (ii) detecting the presence or absence of an amplification product indicative of the presence of MTB in the sample.

The representative primer claim was directed to a primer comprising a specific DNA sequence that targets an MTB signature sequence.

Cepheid moved for summary judgment of invalidity under §101, and the district court granted the motion.

Issue/Holding:

Did the district court err in granting summary judgment of invalidity?  (continue reading)

Summary by:  Molly Chen

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