Arent Fox Urges US Supreme Court to Hear Critical Biotech Case

The invention at issue involved the discovery of fetal DNA in maternal plasma and serum — material previously discarded as “waste.” The inventors used that discovery to create a non-invasive test for prenatal diagnosis that avoided potentially dangerous, invasive techniques, such as an amniocentesis. The Court of Appeals for the Federal Circuit acknowledged that the invention “revolutionized prenatal care,” but invalidated the patent, concluding that the claims applied “conventional” techniques to a natural phenomenon and thus patent ineligible. 
 
Intellectual Property partner Alexander H. Spiegler and associate Christopher H. Yaen filed the brief on behalf of the Wisconsin Alumni Research Foundation, the Indiana University Research and Technology Corporation, and San Diego Intellectual Property Law Association. In the brief, the leading research organizations argue that the court misinterpreted the Supreme Court’s precedent and incorrectly focused on conventionality of techniques, while overlooking the novel application of those methods.
 
"The Supreme Court has held that a claim is patent eligible when an inventor discovers the source of a problem and solves it by using an obvious method,” said Jeff Vockrodt, former Arent Fox Intellectual Property partner. “The Federal Circuit acknowledges that the inventors were the first to discover cell-free fetal DNA from maternal plasma, but still concluded that detecting this unknown DNA would have been routine and conventional. That rationale is inconsistent and ignores precedent.”
 
Chambers Global, Chambers USA, and Legal 500 annually recognize the Intellectual Property practice and its attorneys as industry leaders. Arent Fox is one of the few “go-to” firms for novel and high-profile intellectual property issues and with more than 100 full-time IP professionals, the group offers a full range of services across copyright, patent, and trademark matters.