From Law360:

The Electronic Frontier Foundation and R Street Institute on Wednesday urged the justices to hear Ariosa Diagnostics Inc’s appeal of a Federal Circuit decision upholding Illumina Inc.’s prenatal testing technology patent. Allowing another party to come along and patent something that was already disclosed, meaning something that was no longer new or inventive, goes against the very purpose of patents, the nonprofits said.


The EFF and R Street agreed with Ariosa in claiming that the Federal Circuit needs to be put back on the right track. The court had undermined the idea that the original inventor of a concept should be the one who gets the patent, instead making it the first inventor to write it into the claims specifically, the brief states.

If this practice continues, inventors will be forced to write overly broad claims, which puts examiners in a tough position over whether to approve them, the amici said. These patents will then have a broader, less-defined scope that hurts the public, the nonprofits said.

But in this case, the EFF and R Street said it was clear that the claims would invalidate Illumina’s patent, meaning the only question is, problematically, on the placement of the text, not the actual substance of it.

Counsel for Ariosa and Illumina didn’t respond to requests for comment.

The patent-in-suit is U.S. Patent Number 7,955,794.

The amici are represented by Daniel K. Nazer and Alexandra H. Moss of the Electronic Frontier Foundation, and Charles Duan of R Street.

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