Amici led by Eli Lilly file brief in Supreme Court in support of Sequenom certiorari petition

By Gene Quinn
April 4, 2016

Bob Armitage

Bob Armitage

On Friday afternoon, a group of amici led by Eli Lilly filed an amici curiae brief in the United States Supreme Court in the matter of Sequenom, Inc. v. Ariosa Diagnostics, Inc. The Eli Lilly brief, which names patent attorney and former Eli Lilly General Counsel Robert Armitage as counsel of record, was filed in support of the petitioner, Sequenom. Eli Lilly is joined in this brief by Eisai Inc., Upsher-Smith Laboratories, Inc., Pfizer Inc., and Etiometry, Inc.

On March, 21, 2016, Sequenom (who is represented by Thomas Goldstein, the founder of the widely popular SCOTUS Blog) filed a Petition for Writ of Certiorari in the Supreme Court, challenging the decision of the United States Court of Appeals for the Federal Circuit in Ariosa Diagnostics, Inc. v. Sequenom, Inc. If the Supreme Court takes this case, which they should, they will be required to reconsider the unfortunate breadth of their prior ruling in Mayo Collaborative Servs. v. Prometheus Labs. See SCOTUS Blog Founder asks Supreme Court to Reconsider Mayo.

In the amici brief filed by Eli Lilly et al, an alternative question presented is offered. After explaining that the in addition to the patentability requirements set forth in the Patent Act, the Supreme Court has also started to impose “a non-statutory implicit exception to patentability” as a part of a de facto threshold test for patentability. The brief explains that this implicit exception “bars patents directed or relating to natural produce and entirely mental processes.” The preamble of the question presented ends with the question itself, which reads:

Given the current explicit statutory limitations on patenting in the Patent Act—and the proper interpretation of those limitations—should the Court’s judicially imposed implicit exception to subject matter considered to be eligible for patenting be abrogated, such that patentability and patent validity are to be determined solely under such explicit statutory provisions?

In essence, the Supreme Court in Mayo v. Prometheus conflated the various sections of the Patent Act, forcing a multiplicity of inquiries into the single patent eligibility inquiry. This is something that previous Supreme Court panels had always chided other courts for doing, saying that it is critical to allow the different sections of the statute to do the work for which they were each designed. This is particularly problematic given that the patent eligibility inquiry, which arises under 35 U.S.C. 101, has always intentionally been a very, very low threshold so as to not unnecessarily weed out technologies and innovations without even considering whether they are useful, new, non-obvious and appropriately described. But when the Supreme Court concerns itself under the patent eligibility inquiry with conventional steps, for example, the Court inappropriately interweaved novelty (35 U.S.C 102) and obviousness (35 U.S.C. 103) into the patent eligibility determination, which is legally inappropriate.

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Rather than use the word “conflate” to describe the mongrel mixture of patentability requirements the Supreme Court undertook in Mayo, the Eli Lilly brief characterizes the analysis employed by the Supreme Court as including a separate, implicit “threshold test” for patentability that is applied even before consideration of the statutory patentability requirements. Eli Lilly hypothesizes that this “implicit exception was imposed to assure that patents cannot validly protect—or preempt access to—laws of nature, natural phenomena, or abstract ideas.”

The Eli Lilly brief goes on to explain that this implicit exception is unnecessary and should be abrogated:

Today, explicit statutory provisions of the con- temporary Patent Act found in 35 U.S.C. §§ 101, 102, 103, 112(a), 112(b), and 112(f) serve to preclude se- curing a valid patent on the same subject matter that the policy justification for the implicit exception sought to bar from patenting. Therefore, the Court should now consider abrogating the implicit exception in deference to the explicit patentability requirements that Congress imposed.

The brief goes on page after page to show exactly how the sections of the Patent Act, individually and in combination, can and do work together to prevent laws of nature, natural phenomena and abstract ideas from being patented.

Hopefully the Supreme Court will take this case and at a minimum refine the Mayo test so that important scientific breakthroughs will once again become patent eligible.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. step back April 4, 2016 1:17 pm

    I have a sick feeling re what SCOTUS is going to do if they decide to pick up this case. Given their perverse ideas about science, “laws of nature” and the magical incantation of the “apply it” words (did those come from Harry Potter? Absurdido Makeitithso Andso?) it will be no surprise that the word “discoveries” will be wiped clean from the U.S. Constitution.

    http://www.sporcle.com/games/Dyer/exporcliarmus

  2. Gene Quinn April 4, 2016 1:50 pm

    Step-

    I hope SCOTUS takes the case. My opinion is that the situation can only get better. Right now tremendously significant scientific breakthroughs, like the one at issue in Sequenom v. Ariosa, cannot be patented. Similarly, exciting new antibiotics that treat currently antibiotic resistant strains of bacteria are unable to be patented. This is a travesty.

    I have absolutely no confidence the Supreme Court will get this case right. But on the off chance they do things could rebound back to normal. If they double down on their idiotic understanding of science and technology then the only recourse will be to force the issue in Congress. That is probably what is necessary (unfortunately).

    -Gene

  3. Appearance of ... April 4, 2016 2:56 pm

    SCOTUS may indeed get the case wrong, but the IP community has to try to correct things. Congratulations to Eli Lilly, Bob Armitage, and the others for making a good presentation here.

  4. Curious -- color me a cynic April 4, 2016 3:01 pm

    But on the off chance they do things could rebound back to normal.
    If SCOTUS does take a step back from the brink, I would not be surprised if the Federal Circuit interprets that step back very narrowly while continuing to broadly construe the narrow language of Bilski and Alice Corporation.

  5. Gene Quinn April 4, 2016 3:07 pm

    Appearance-

    Agreed. This is a very good brief by Eli Lilly et al. I suspect they stayed away from the argument that SCOTUS conflated 101, 102, 103 and 112 because they don’t believe they will be receptive to that argument. While I think they have certainly conflated all those sections I suspect they would not be open to such a direct argument. I think this nuanced argument makes that point in a way that they could accept, if they are willing to approach the material with an open mind.

    -Gene

  6. Night Writer April 5, 2016 11:37 am

    Great article. Good to see some real pros try to persuade the SCOTUS. I think the SCOTUS knows exactly what they did and think they know at some level that what they have done is unconstitutional and wrong. So, maybe they will bite to try to mitigate their criminal activity. Yes it is strong language, but let’s be real. The justices know they acting unconstitutionally and they are doing it because they were persuaded the situation was so bad that they decided to do this. (A bit like a Truman and FDR deciding to drop the atom bomb and fire bomb Dresden, respectively. Both knew it was a crime against humanity and did it anyway.)

    What I think the key to getting to the justices is guilt and an appeal that what they were sold as reality is not. That K Street has hoodwinked them. The fight should be for empirical evidence that the patents are a giant help and that the justices taking reality from reading the briefs is wrong. They have admitted that they form reality based on the briefs and are willing to make findings of fact based on the briefs. This is very wrong. The reality is that we need to replace the whole lot of them with justices that have an interest in our Constitution.

  7. step back April 5, 2016 1:28 pm

    Night Writer @6 opines:
    SCOTUS knows … at some level that what they have done is unconstitutional and wrong.

    IMHO, the exact opposite is the truth.
    The Supremes live inside the Washington Bubble dome.
    Everyone around them constantly complements them on their brilliance and keen legal minds.
    They start to actually believe what their sycophantic subjects tell them.

    The start to actually believe that there are so-called “friends” of the court (amici curie) and what those “friends” say can be trusted (e.g. gene slicing is just like plucking bananas of the fruit cake tree).

    They forget all the rules of proper jurisprudence including admitting into evidence at the appellate level, amici brief “facts” that have never been subject to cross examination or Daubart (sp?) gate keeping re alleged expert hearsay.

    The late Scalia J. broke the code of infallibility in Myriad by admitting he did not understand molecular biology. But when is the next time that one of the “Supremes” confesses to not being supreme?

  8. Night Writer April 5, 2016 2:50 pm

    @7 Step back: Maybe you are right.