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Judge Stark grants Rule 12(b)(6) motion in part based on finding of unpatentable subject matter

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In a recent Memorandum Opinion, Chief Judge Leonard P. Stark granted defendants’ motion to dismiss with respect to claim 1 of U.S. Patent No. 5,612,179 (“the ’179 patent”), after finding that claim to be directed toward a natural phenomenon, a category of unpatentable subject matter. Genetic Techs. Ltd. v. Bristol-Myers Squibb Co., C.A. No. 12-394-LPS (D. Del. Oct. 30, 2014). Judge Stark denied defendants’ motion to dismiss without prejudice to renew as the remaining asserted claims of the ’179 patent and the asserted claims of the other patent-in-suit, U.S. Patent No. 5,851,762 (“the ‘762 patent”).

While acknowledging that it was not precedential at the time of the Court’s decision, Judge Stark was nevertheless persuaded by the Federal Circuit’s decision in Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013), which stated that “to grant dismissal of a patent infringement suit at the pleading stage for lack of patentable subject matter, ‘the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.’” Id. at 6-7. Claim 1 of the ’179 patent was directed to a method of “amplifying and analyzing correlations between different regions of DNA sequence.” Id. at 10. Relying on the two-step framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), Judge Stark first determined that claim 1 recites a natural phenomenon, explaining that a “correlation that preexists in the human body is an unpatentable phenomenon.” Id. at 11. Next, Judge Stark considered whether there existed “additional steps in the claim . . . sufficient to satisfy patent eligibility.” Judge Stark found that the claim’s additional steps did not give rise to an “inventive concept” as to satisfy patent eligibility:

The asserted claim recites a series of steps to manifest the natural law – that is, to detect the natural correlations between coding and noncoding sequences. The added steps used to discern these correlations consist only of routine and conventional techniques. The patent specification states this outright, making this one of the (perhaps rare) occasions in which further factual development and claim construction are not necessary and invalidity can properly be determined at the 12(b)(6) stage.

 Id. at 13. Judge Stark therefore concluded that “the only plausible reading of claim 1 of the ’179 patent is that its additional steps, which consist only of routine and conventional techniques, fail to give rise to an ‘inventive concept,’ such that when, taken as a whole, the claim does not provide meaningful limitations that restrict the natural correlation to an application.” Id. at 14. Given the parties’ limited analysis in their briefing and during oral argument, Judge Stark stated that “the Court will require additional assistance from the parties to apply the foregoing analysis to the ’762 patent (and to the remaining claims of the ‘179 patent as well).” Id. at 20.

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